To: | Galton Voysey Limited (jkatz@dglaw.com) |
Subject: | U.S. Trademark Application Serial No. 88376347 - STERLING PACIFIC - 30355-2-0 |
Sent: | February 04, 2020 07:40:53 AM |
Sent As: | ecom110@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88376347
Mark: STERLING PACIFIC
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Correspondence Address: |
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Applicant: Galton Voysey Limited
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Reference/Docket No. 30355-2-0
Correspondence Email Address: |
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PRIORITY ACTION
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: February 04, 2020
USPTO database searched; no conflicting marks found. The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d). 15 U.S.C. §1052(d); TMEP §704.02.
Applicant must address issues shown below. On February 1, 2020, the examining attorney and Jeffrey C. Katz discussed the issues below. Applicant must timely respond to these issues. See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §708.05.
This application was approved for publication on January 9, 2020. See 37 C.F.R. §2.80. However, approval of the application has been withdrawn to address the issue(s) below. See TMEP §706.01. The trademark examining attorney apologizes for any inconvenience this may cause applicant.
AMEND ID TO AVOID DECEPTIVENESS REFUSAL
Applicant’s mark includes the wording “STERLING”, which indicates that applicant’s goods have the following feature or characteristic and consequently, the mark could indicate that goods are made of sterling silver, but the identification of goods is broad enough to encompass watches made of less costly metals. The ID must therefore be amended to “watches of sterling silver”, or the mark must be refused as deceptive under Section 2(a) of the Act. TMEP 1203.02
This feature or characteristic is considered desirable for applicant’s goods, however, if some or all of the goods do not (or will not) in fact have or exhibit this feature or characteristic, then registration may be refused because the mark consists of or includes deceptive matter in relation to the identified goods and/or services. See 15 U.S.C. §1052(a); In re Budge Mfg. Co., 857 F.2d 773, 8 USPQ2d 1259 (Fed. Cir. 1988); TMEP §1203.02-.02(b).
To avoid such refusal, applicant may amend the identification to specify that the goods and/or services possess this relevant feature or characteristic. See TMEP §§1203.02(e)(ii), (f)(i), 1402.05 et seq. However, merely amending the identification to exclude goods or services with the named feature or characteristic will not avoid a deceptiveness refusal. TMEP §1203.02(f)(i).
Therefore, applicant may amend the identification in Class 14 to the following, if accurate:
Watches made of sterling silver. IC 14
For this application to proceed, applicant must explicitly address each 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.
How to respond. Click to file a response to this nonfinal Office action.
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.
/Sanjeev K. Vohra
Trademark Examining Attorney
Law Office 110
571.272.5885 - Work
571.273.5885 - Fax
sanjeev.vohra@uspto.gov
RESPONSE GUIDANCE