To: | I-Pay Global, LLC (trademarks@troutman.com) |
Subject: | U.S. Trademark Application Serial No. 88369567 - MY UKRAINIAN BRIDE - 251612.97 |
Sent: | November 15, 2019 12:25:41 PM |
Sent As: | ecom108@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88369567
Mark: MY UKRAINIAN BRIDE
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Correspondence Address: 600 PEACHTREE STREET NE, SUITE 3000
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Applicant: I-Pay Global, LLC
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Reference/Docket No. 251612.97
Correspondence Email Address: |
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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). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: November 15, 2019
This Office action is in response to applicant’s communication filed on November 11, 2019. In the response, applicant disclaimed the term BRIDE. Upon further review of the application, it is apparent that in addition to the BRIDE, the term UKRAINIAN also has to be disclaimed.
PLEASE NOTE: Applicant is encouraged to e-mail the trademark examining attorney to resolve the issues raised below at Bill.Dawe@uspto.gov. Upon receipt of the e-mail accepting the amendments set forth below, the examining attorney will prepare an examiner’s amendment, enter the amendments into the databases and approve the application for publication.
GENERAL INQUIRY
Applicant must explain whether “UKRAINIAN” has any meaning or significance in the industry in which the goods are manufactured, or if such wording is a “term of art” within applicant’s industry. See 37 C.F.R. §2.61(b); TMEP §814.
Further, applicant must provide additional information about this wording to enable proper examination of the application. Specifically, applicant must respond to the following questions: With reference to the identified goods, does the term UKRAININAN describe the type of attire worn by the dolls? Are applicant’s dolls dressed in traditional UKRAINIAN attire?
Failure to respond to a request for information is an additional ground for refusing registration. See In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701 (TTAB 2003); TMEP §814.
DISCLAIMER
In this case, applicant must disclaim the wording “UKRAININAN BRIDE” because it is not inherently distinctive. These unregistrable term(s) at best are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
The attached evidence from online dictionaries shows that the term “UKRAININAN” is an adjective which means relating to Ukraine, its people, or their language. “BRIDE” refers to a woman just married or about to be married. Accordingly, the term “UKRAININAN BRIDE” is merely descriptive of a feature of applicant’s identified goods, namely, the dolls are dressed like Ukrainian brides. Therefore, applicant must disclaim the descriptive term “UKRAINIAN BRIDE”.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “UKRAINIAN BRIDE” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
CLOSING
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.
How to respond. Click to file a response to this nonfinal Office action
/William H. Dawe, III/
Examining Attorney
Law Office 108
(571) 272-9337 voice
(571) 273-9337 fax
Bill.Dawe@USPTO.GOV (not for fomal responses)
RESPONSE GUIDANCE