UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.  A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.

 

 

ISSUE/MAILING DATE: 6/14/2019

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

SUMMARY OF ISSUES

 

            - Trademark Act Section 2(a) Refusal – False Connection

            -  Information Required about Relationship between Applicant & Institution

 

TRADEMARK ACT SECTION 2(a) REFUSAL – FALSE CONNECTION

 

Registration is refused because the applied-for mark consists of or includes matter which may falsely suggest a connection with the United States Consumer Product Safety Commission (CPSC).  Trademark Act Section 2(a), 15 U.S.C. §1052(a).  Although the United States Consumer Product Safety Commission is not connected with the goods provided by applicant under the applied-for mark, “CPSC” is so well-known that consumers would presume a connection.  See id.

 

Under Trademark Act Section 2(a), the registration of a mark that “consists of or comprises matter that may falsely suggest a connection with persons, institutions, beliefs, or national symbols” is prohibited.  In re Pedersen, 109 USPQ2d 1185, 1188 (TTAB 2013).  To establish that an applied-for mark falsely suggests a connection with a person or an institution, the following is required:

 

(1)       The mark sought to be registered is the same as, or a close approximation of, the name or identity previously used by another person or institution.

 

(2)       The mark would be recognized as such, in that it points uniquely and unmistakably to that person or institution.

 

(3)       The person or institution identified in the mark is not connected with the goods sold performed by applicant under the mark.

 

(4)       The fame or reputation of the named person or institution is of such a nature that a connection with such person or institution would be presumed when applicant’s mark is used on its goods.

 

In re Pedersen, 109 USPQ2d at 1188-89; In re Jackson Int’l Trading Co., 103 USPQ2d 1417, 1419 (TTAB 2012); TMEP §1203.03(c)(i); see also Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imps. Co., 703 F.2d 1372, 1375-77, 217 USPQ 505, 508-10 (Fed. Cir. 1983) (providing foundational principles for the current four-part test used to determine the existence of a false connection).

 

The term “institution” has been broadly construed with respect to Section 2(a).  In re Pedersen, 109 USPQ2d 1185, 1191 (TTAB 2013) (citing In re Shinnecock Smoke Shop, 571 F.3d 1171, 1173, 91 USPQ2d 1218, 1219 (Fed. Cir. 2009) (“[T]the ordinary meaning of ‘institution’ suggests the term is broad enough to include a self-governing Indian nation,” quoting Black’s Law Dictionary . . . defining “institution” as “[a]n established organization,” and “organization” as a “body of persons . . . formed for a common purpose”); In re White, 73 USPQ2d 1713, 1718 (TTAB 2004) (“each federally recognized Apache tribe is necessarily either a juristic person or an institution”); In re Urbano, 51 USPQ2d 1776, 1779 (TTAB 1999) (entire organization comprising the Olympic Games, as a whole, qualifies as an “institution” within the meaning of Section 2(a)); In re N. Am. Free Trade Ass’n, 43 USPQ2d 1282, 1285-86 (TTAB 1997) (NAFTA treaty is an institution in the same way the United Nations is an institution; legislative history of Section 2(a) indicates the reference to “institution” therein “was designed to have an expansive scope.”)); TMEP §1203.03(a)(ii). 

 

An institution need not “be large, well known, or ‘national’ to be protected from the registration of a mark that falsely suggests a connection” under Section 2(a).  TMEP §1203.03(a)(ii); see Gavel Club v. Toastmasters Int’l, 127 USPQ 88, 94 (TTAB 1960).

 

The U.S. government is a “person” within the meaning of Section 2(a).  15 U.S.C. §1127; FBI v. Societe: “M. Bril & Co.”, 172 USPQ 310, 313 (TTAB 1971); TMEP §1203.03(a)(i).  Accordingly, the common names of, and acronyms for, U.S. government agencies and instrumentalities are considered persons.  TMEP §1203.03(a)(i); see In re Peter S. Herrick P.A., 91 USPQ2d 1505, 1506 (TTAB 2009); NASA v. Record Chem. Co., 185 USPQ 563, 566 (TTAB 1975).  In addition to qualifying as a “person,” U.S. government agencies and instrumentalities, as identified by their common names and acronyms, are also “institutions” within the meaning of Section 2(a).  TMEP §1203.03(a)(ii); see In re Peter S. Herrick P.A., 91 USPQ2d at 1506; In re Cotter & Co., 228 USPQ 202, 204 (TTAB 1985).

 

In this case, the attached Internet evidence from the websites of Acronym Finder (www.acronymfinder.com), the United States Consumer Product Safety Commission (www.cpsc.gov), Investopedia (www.investopedia.com), PR Newswire (www.prnewswire.com), the United States Government (www.usa.gov), and Wikipedia (http://en.wikipedia.org), shows that the lettering “CPSC” refers to the United States Consumer Product Safety Commission and would be recognized as such to consumers.  Since the goods of the applicant are consumer products, which would be subject to regulation by the Consumer Product Safety Commission, but the applicant is not connected to the Consumer Product Safety Commission, this mark would be misleading to consumers who would presume a connection with the well-known institution.

 

As such, the applicant’s applied-for mark must be refused under Trademark Act Section 2(d).

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusal, applicant must also respond to the requirement set forth below.

 

INFORMATION REQUIRED ABOUT RELATIONSHIP BETWEEN APPLICANT & INSTITUTION

 

Due to the renown of the institution or person named in the mark, and the fact that there is no information in the application record regarding a connection with applicant, applicant must specify whether the person or institution named in the mark has any connection with applicant’s goods and/or services, and if so, must describe the nature and extent of that connection.  See 37 C.F.R. §2.61(b); TMEP §1203.03(c)(i). 

 

RESPONSE GUIDELINES

 

For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end and the trademark will fail to register.  See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a); TMEP §§718.01, 718.02.  Additionally, the USPTO will not refund the application filing fee, which is a required processing fee.  See 37 C.F.R. §§2.6(a)(1)(i)-(iv), 2.209(a); TMEP §405.04.

 

When an application has abandoned for failure to respond to an Office action, an applicant may timely file a petition to revive the application, which, if granted, would allow the application to return to active status.  See 37 C.F.R. §2.66; TMEP §1714.  The petition must be filed within two months of the date of issuance of the notice of abandonment and may be filed online via the Trademark Electronic Application System (TEAS) with a $100 fee.  See 37 C.F.R. §§2.6(a)(15)(ii), 2.66(a)(1), (b)(1).

 

Because of the legal technicalities and strict deadlines involved in the USPTO application process, applicant may wish to hire a qualified U.S. attorney specializing in trademark matters to represent applicant in this process and provide legal advice.  Although the undersigned trademark examining attorney is permitted to help an applicant understand the contents of an Office action as well as the application process in general, no USPTO attorney or staff is permitted to give an applicant legal advice or statements about an applicant’s legal rights.  TMEP §§705.02, 709.06. 

 

For attorney referral information, applicant may consult the American Bar Association’s Consumers’ Guide to Legal Help or an online directory of legal professionals, such as FindLaw®.  The USPTO, however, may not assist an applicant in the selection of a private attorney.  37 C.F.R. §2.11.

 

Please note that foreign attorneys, other than duly authorized Canadian attorneys, are not permitted to represent applicants before the USPTO.  See 37 C.F.R. §§2.17(e), 11.14(c), (e); TMEP §602.03-.03(c).  The only attorneys who may practice before the USPTO in trademark matters are (1) attorneys in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other U.S. commonwealths/territories; and (2) duly authorized Canadian agents/attorneys.  See 37 C.F.R. §§2.17(e), 11.14(a), (c); TMEP §602.

 

TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application.  See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820.  TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.  However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.  

 

 

 

/Anna C. Burdecki/

Anna C. Burdecki

Trademark Examining Attorney

Law Office 108

Phone: (571)270-1941

anna.burdecki@uspto.gov

 

TO RESPOND TO THIS LETTER:  Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

 

All informal e-mail communications relevant to this application will be placed in the official application record.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 6/14/2019 FOR U.S. APPLICATION SERIAL NO. 88360395

 

Your trademark application has been reviewed.  The trademark examining attorney assigned by the USPTO to your application has written an official letter to which you must respond.  Please follow these steps:

 

(1)  Read the LETTER by clicking on this link or going to http://tsdr.gov.uspto.report/, entering your U.S. application serial number, and clicking on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification. 

 

(2)  Respond within 6 months (or sooner if specified in the Office action), calculated from 6/14/2019, using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  A response transmitted through TEAS must be received before midnight Eastern Time of the last day of the response period.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions. 

 

(3)  Questions about the contents of the Office action itself should be directed to the trademark examining attorney who reviewed your application, identified below. 

 

/Anna C. Burdecki/

Anna C. Burdecki

Trademark Examining Attorney

Law Office 108

Phone: (571)270-1941

anna.burdecki@uspto.gov

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp. 

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.