Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

FINAL OFFICE ACTION

 

The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned.  Respond using the Trademark Electronic Application System (TEAS) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  February 04, 2020

 

 INTRODUCTION

 

This Office action is in response to applicant’s communication filed on December 12, 2019.

 

In a previous Office action dated June 14, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following:  Trademark Act Section 2(a) for a false connection with a U.S. government agency.  In addition, applicant was required to satisfy the following requirement:  provide information about the relationship between the applicant and U.S. government agency at issue.

 

In the December 12, 2019 Response, the applicant made no argument against the refusal nor did the applicant provide the required information.  Instead, the applicant provided only a new specimen showing the applied-for mark in use in commerce.

 

The trademark examining attorney maintains and now makes FINAL the refusal and requirement in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUES MADE FINAL

 

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

            -  Information Required – Inquiry 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 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 Internet evidence attached to the June 14, 2019 Office action, from the websites of Acronym Finder (www.acronymfinder.com) and the United States Consumer Product Safety Commission (www.cpsc.gov) showed that the mark sought to be registered, “CPSC”, is the same as that of the United States Consumer Product Safety Commission (CPSC).  See the evidence attached to the June 14, 2019 Office action.

 

Further, the Internet evidence attached to the June 14, 2019 Office action, 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), showed that the mark “CPSC” would be recognized as the United States Consumer Product Safety Commission (CPSC), in that letters “CPSC” point uniquely and unmistakably to the Consumer Product Safety Commission (CPSC).  See the evidence attached to the June 14, 2019 Office action. 

 

To supplement the previously-attached Internet evidence, the attached Internet evidence from the websites of Anchor It! (www.anchorit.gov), Arnold & Porter (www.arnoldporter.com), Safer Products (www.saferproducts.gov), and the Google search engine (www.google.com), shows that the mark “CPSC” would be recognized as the United States Consumer Product Safety Commission (CPSC), in that letters “CPSC” point uniquely and unmistakably to the Consumer Product Safety Commission (CPSC).

 

Additionally, there is no information in the application record regarding a connection between United States Consumer Product Safety Commission (CPSC) and the applicant.  In the June 14, 2019 Office action, the examining attorney specifically inquired as to such a relationship; however, the applicant gave no response to the inquiry.  Thus, it is presumed that there is no connection between the United States Consumer Product Safety Commission (CPSC) and the goods sold by the applicant under the applied-for mark.

 

Further, the goods of the applicant are consumer products, which would be subject to regulation by the Consumer Product Safety Commission (CPSC).  The previously-attached evidence and the evidence attached hereto shows that the fame or reputation of the United States Consumer Product Safety Commission (CPSC) is of such a nature that a connection with the agency would be presumed when applicant’s mark is used on its goods.  As there is no evidence of record indicating that the applicant is connected to the Consumer Product Safety Commission (CPSC), 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(a).

 

Considering all of the above, the refusal under Trademark Act Section 2(a) is hereby made FINAL.

 

INFORMATION REQUIRED – INQUIRY ABOUT RELATIONSHIP BETWEEN APPLICANT & INSTITUTION NAMED IN MARK

 

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 if so, must describe the nature and extent of that connection.  See 37 C.F.R. §2.61(b); TMEP §1203.03(c)(i). 

 

How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

 

/Anna C. Burdecki/

Anna C. Burdecki

Examining Attorney

Law Office 108

(571) 270-1941

anna.burdecki@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on February 04, 2020 for

U.S. Trademark Application Serial No. 88360395

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Anna C. Burdecki/

Anna C. Burdecki

Examining Attorney

Law Office 108

(571) 270-1941

anna.burdecki@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from February 04, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”