Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

NONFINAL 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).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

 

Issue date: 

 

This Office action is in response to applicant’s communication filed on December 20, 2019.

 

Registration was previously refused based on the following refusal(s) and/or requirement(s): 

 

1. Refusal under Section 2(d) based on a likelihood of confusion with registered marks.
2. Refusal under Section 2(e)(1) on the basis the mark is merely descriptive.
3. Requirement for clarification of the entity/owner information.
4. Requirement for clarification of the identification of services.
5. Requirement for compliance with the multiple-classification requirements.
6. Requirement for information.

 

A prior-filed, pending application has been cited as a potential bar to registration.

 

Applicant argued against the refusals, provided additional entity/owner information, amended the identification of services and provided information.  With the exception of the owner information, applicant’s amendments are accepted and the prior refusals, citations, and requirements are obviated/withdrawn.  Further clarification of the owner information is required.

 

In addition, a new requirement for a disclaimer must now be issued.

 

Here is a SUMMARY OF ISSUES that applicant must address:

 

1. Requirement for clarification of the owner information.
2. Requirement for a disclaimer. 

 

1)       Owner Information

 

When an applicant is a trust it must identify the trustees as the applicant and indicate the name of the trust, if any.  TMEP §803.03(e).  Additionally, applicant must state under whose laws the trust exists, and list the names and citizenship of the individual trustees.  Id.  When there are more than ten individual trustees, applicant need list only the first ten trustees.  Id.

 

In this case, applicant must amend the owner information to clarify the full name of each trustee.  With the exception of the first listed trustee, each is identified as “Swami” followed by one name.  “Swami” is merely a title identifying someone as a religious leader or teacher.  Here, it appears that applicant has provided only a first name or last name with a title for each trustee.  The first name and surname for each trustee should be identified.  Alternatively, applicant must confirm that the trustee names currently listed are, in fact, the legal names of the trustees so that further clarification is unnecessary.

 

2)       Disclaimer

 

Applicant must provide a disclaimer of the unregistrable part(s) of the applied-for mark even though the mark as a whole appears to be registrable.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).  A disclaimer of an unregistrable part of a mark will not affect the mark’s appearance.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).

 

In this case, applicant must disclaim “SPIRITUAL” because it is not inherently distinctive.  This/these unregistrable term(s) at best is/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). 

 

“SPIRITUAL” refers to religious practices and to spiritualism (see attached definitions and those attached to the prior Office action).  Applicant’s services either specifically indicate they are “SPIRITUAL” in nature or they are broadly identified and, therefore, presumed to include those affecting the spirt or being for spiritual purposes.  Thus, “SPIRITUAL” merely describes a feature or purpose of the services and must be disclaimed.

 

Applicant may respond to this issue by submitting a disclaimer in the following format: 

 

No claim is made to the exclusive right to use “SPIRITUAL” 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. 

 

Response Advisory

 

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.    

 

Please do not hesitate to contact the undersigned with any questions.

 

/MaureenDallLott/

 

Maureen Dall Lott

Trademark Examining Attorney, Law Office 105

United States Patent and Trademark Office

571-272-9714

maureen.lott@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.