To: | AAH Holdings LLC (ptodocket@arelaw.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88363844 - CALMER CANINE - 3885/50 |
Sent: | 5/1/2019 9:02:33 PM |
Sent As: | ECOM105@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 Attachment - 38 Attachment - 39 Attachment - 40 Attachment - 41 Attachment - 42 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88363844
MARK: CALMER CANINE
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: AAH Holdings LLC
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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: 5/1/2019
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.
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the below issue(s). 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SEARCH OF OFFICE’S DATABASE OF MARKS: The USPTO’s database of registered and pending marks has been searched and no conflicting marks were found that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
SUMMARY OF ISSUES:
· SECTION 2(e)(1) REFUSAL – MARK IS MERELY DESCRIPTIVE
· ADVISORY – MARK ELIGIBLE FOR REGISTRATION ON THE SUPPLEMENTAL REGISTER AFTER APPLICANT FILES AN AMENDMENT TO ALLEGE USE
· ADVISORY – DISCLAIMER OF "CANINE" WILL BE REQUIRED IF APPLICANT SEEKS REGISTRATION OF THE MARK ON THE SUPPLEMENTAL REGISTER
SECTION 2(e)(1) REFUSAL – MARK IS MERELY DESCRIPTIVE:
Registration is refused because the applied-for mark CALMER CANINE merely describes a quality, characteristic, function, feature, purpose, or use of applicant’s goods. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.
In this case, applicant has applied to register the mark CALMER CANINE for use in connection with “High frequency electromagnetic therapy apparatus.” The attached dictionary definitions from Merriam-Webster® online dictionary indicate that CALMER refers to not being excited or upset, and CANINE refers to a dog. Thus, the combined wording CALMER CANINE merely describes a dog that is not excited or upset, i.e., calm.
The attached evidence from applicant's website available at http://assisianimalhealth.com/blog/2019/03/coming-soon-anxiety-management-system-dogs/ indicates that applicant's intent-to-use mark CALMER CANINE will be “an Anxiety Management System for Dogs.” Thus, a feature, purpose or characteristic of the goods will be to calm dogs, i.e., lessen their anxiety.
Further, the attached evidence from the following sources establishes that aids, supplements or apparatus designed or intended to calm dogs are in common use in the pet industry:
- http://www.pethub.com/article/10-best-calming-aids-pets
- http://www.1800petmeds.com/Relax+++Calm+Chews-prod11636.html?Ntt=Relax+
- http://www.chewy.com/zesty-paws-stress-anxiety-calming/dp/159489
- http://www.petco.com/shop/en/petcostore/product/calmz-anxiety-relief-system?rrec=true
Therefore, registration is refused under Trademark Act Section 2(e)(1). Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.
ADVISORY – MARK ELIGIBLE FOR REGISTRATION ON THE SUPPLEMENTAL REGISTER AFTER APPLICANT FILES AN AMENDMENT TO ALLEGE USE:
Therefore, if the mark is in use in commerce, applicant may choose to respond to the above refusal by filing an Amendment to Allege Use and then requesting registration of the mark on the Supplemental Register. If applicant files an acceptable Amendment to Allege Use and also amends to the Supplemental Register, the application’s effective filing date will be the date applicant met the minimum filing requirements under 37 C.F.R. §2.76(c) for an Amendment to Allege Use. TMEP §§816.02, 1102.03; see 37 C.F.R. §2.75(b). In addition, the undersigned trademark examining attorney will conduct a new search of the USPTO records for conflicting marks based on the later application filing date. TMEP §§206.01, 1102.03.
How to File an Amendment to Allege Use
If the mark is in use in commerce, applicant may file an Amendment to Allege Use by submitting the form Statement of Use/Amendment to Allege Use for Intent-to-Use Application available at http://www.gov.uspto.report/trademarks-application-process/filing-online/intent-use-itu-forms.
The filing of just an Amendment to Allege Use does not constitute a response to this Office Action, nor does it extend the deadline for responding to this Office Action. TMEP §1104. Therefore, applicant must still file a timely response to this Office Action that addresses each of the refusal(s) and requirement(s) raised in this Office Action. An amendment to the Supplemental Register will be a procedurally acceptable response to the Section 2(e)(1) refusal once applicant has filed an Amendment to Allege Use. TMEP §816.04. A response to this Office Action, including a request to amend to the Supplemental Register, can be filed by submitting the Response to Examining Attorney Office Action Form available at http://www.gov.uspto.report/trademarks-application-process/filing-online/response-forms.
Benefits of Registration on the Supplemental Register
(1) Use of the registration symbol ® with the registered mark in connection with the designated goods and/or services, which provides public notice of the registration and potentially deters third parties from using confusingly similar marks.
(2) Inclusion of the registered mark in the USPTO’s database of registered and pending marks, which will (a) make it easier for third parties to find it in trademark search reports, (b) provide public notice of the registration, and thus (c) potentially deter third parties from using confusingly similar marks.
(3) Use of the registration by a USPTO trademark examining attorney as a bar to registering confusingly similar marks in applications filed by third parties.
(4) Use of the registration as a basis to bring suit for trademark infringement in federal court, which, although more costly than state court, means judges with more trademark experience, often faster adjudications, and the opportunity to seek an injunction, actual damages, and attorneys’ fees and costs.
(5) Use of the registration as a filing basis for a trademark application for registration in certain foreign countries, in accordance with international treaties.
See 15 U.S.C. §§1052(d), 1091, 1094; J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition §§19:33, 19:37 (rev. 4th ed. Supp. 2017).
ADVISORY – DISCLAIMER OF “CANINE” WILL BE REQUIRED IF APPLICANT SEEKS REGISTRATION OF THE MARK ON THE SUPPLEMENTAL REGISTER:
Applicant is advised that, if the application is amended to seek registration on the Supplemental Register, applicant will be required to disclaim “CANINE” because such wording appears to be generic in the context of applicant’s goods, which are apparatus for use on dogs. See 15 U.S.C. §1056(a); In re Wella Corp., 565 F.2d 143, 144, 196 USPQ 7, 8 (C.C.P.A. 1977); In re Creative Goldsmiths of Wash., Inc., 229 USPQ 766, 768 (TTAB 1986); TMEP §1213.03(b). See the attached dictionary definition of “CANINE.”
Applicant may submit a disclaimer in the following format:
No claim is made to the exclusive right to use “CANINE” apart from the mark as shown.
TMEP §1213.08(a)(i).
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
RESPONSE GUIDELINES:
Applicant should file a response online using the Response to Examining Attorney Office Action Form available at http://www.gov.uspto.report/trademarks-application-process/filing-online/response-forms.
If applicant requires technical assistance in using the online response form, please email TEAS@uspto.gov.
/Kristin Carlson/
Trademark Examiner, LO 105
571-272-2240
kristin.carlson@uspto.gov
800-786-9199 (Trademark Assistance Center)
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.