| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 88381376 |
| LAW OFFICE ASSIGNED | LAW OFFICE 111 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/88381376/mark.png |
| LITERAL ELEMENT | MEXHANDCRAFT |
| STANDARD CHARACTERS | YES |
| USPTO-GENERATED IMAGE | YES |
| MARK STATEMENT | The mark consists of standard characters, without claim to any particular font style, size or color. |
| ARGUMENT(S) | |
| Section 2(e)(2) Refusal – Primarily Geographically Descriptive: The Examining Attorney has refused registration under Trademark Act Section 2(e)(2), 15 U.S.C. Section §1052(e)(2). In response thereto, Applicant respectfully traverses the rejection. While the term “mex” may be associated with the country of Mexico, the primary definition, as listed by Merriam Webster (http://www.merriam-webster.com/dictionary/Mex) and Dictionary.com (http://www.dictionary.com/browse/mex), is the adjective “Mexican.” This adjective can be used to describe things relating to the Mexican people and the culture of Mexico, and does not necessarily indicate something that originates from Mexico. For example, many U.S. restaurants and food companies incorporate the phrase “mex” into their names to indicate the style of food, not the place of origin. Given the large Mexican-American population in the U.S., it is very common to see names for U.S. businesses that incorporate the word “mex,” but which businesses clearly manufacture, distribute, and sell products that originate in the U.S. This is important because the third requirement of a geographically descriptive refusal is that “Purchasers would be likely to make a goods-place or services-place association; that is, purchasers would be likely to believe that the goods and/or services originate in the geographic place identified in the mark.” Given the large Mexican-American population in the U.S., and given the prevalence of Mexican culture, style, and symbolism in the U.S., especially in the southwest U.S., would purchasers primarily consider the term “mex” to indicate country of origin? The “mex” in the above-cited trademark could easily be describing the style of goods, i.e., Mexican artwork and crafts. Such goods could easily originate anywhere in the U.S., especially in such places as Texas, Arizona, or New Mexico. If the term was a reference to a distant country with very little presence in the U.S., like Zimbabwe or Tibet, then it would be more likely that a U.S. purchaser would think such a term primarily indicates place of origin. However, since Mexican style and culture has a heavy presence in the U.S., and since the term “mex” is most often used to describe that style and culture, it is respectfully submitted that purchasers would first think that the term is primarily describing that style and culture and not the place of origin. Therefore, in view of the above, it is believed that the refusal is improper and should be withdrawn. Applicant gives authorization for the Examining Attorney to enter the amendment below relating to acquired distinctiveness. Section 2(f) Acquired Distinctiveness: The applicant hereby requests that the application be amended to assert a claim of acquired distinctiveness under Section 2(f) and further submits the following statement claiming acquired distinctiveness: The mark has become distinctive of the goods through the applicant’s substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement. |
|
| ADDITIONAL STATEMENTS SECTION | |
| SECTION 2(f) Claim of Acquired Distinctiveness, based on Five or More Years' Use | The mark has become distinctive of the goods/services through the applicant's substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement. |
| ATTORNEY SECTION (new) | |
| NAME | Nils H. Ljungman |
| ATTORNEY BAR MEMBERSHIP NUMBER | XXX |
| YEAR OF ADMISSION | XXXX |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | XX |
| FIRM NAME | Nils H. Ljungman & Associates |
| STREET | PO Box 130 |
| CITY | Greensburg |
| STATE | Pennsylvania |
| POSTAL CODE | 15601 |
| COUNTRY | United States |
| nhla@earthlink.net | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | FMG-01-TDM |
| CORRESPONDENCE SECTION (current) | |
| NAME | MARTINEZ GALLARDO MENDOZA, FERNANDO |
| INTERNAL ADDRESS | 9 |
| STREET | LA RIOJA 2978 |
| CITY | GUADALAJARA, JALISCO |
| POSTAL CODE | 44630 |
| COUNTRY | MX |
| PHONE | +52-13310062447 |
| fmtzgm@hotmail.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| CORRESPONDENCE SECTION (proposed) | |
| NAME | Nils H. Ljungman |
| FIRM NAME | Nils H. Ljungman & Associates |
| STREET | PO Box 130 |
| CITY | Greensburg |
| STATE | Pennsylvania |
| POSTAL CODE | 15601 |
| COUNTRY | United States |
| nhla@earthlink.net; fmtzgm@hotmail.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | FMG-01-TDM |
| SIGNATURE SECTION | |
| DECLARATION SIGNATURE | /Nils H. Ljungman/ |
| SIGNATORY'S NAME | /Nils H. Ljungman/ |
| SIGNATORY'S POSITION | Attorney of Record, Pennsylvania Bar Member |
| DATE SIGNED | 08/20/2019 |
| RESPONSE SIGNATURE | /Nils H. Ljungman/ |
| SIGNATORY'S NAME | Nils H. Ljungman |
| SIGNATORY'S POSITION | Attorney of Record, Pennsylvania Bar Member |
| DATE SIGNED | 08/20/2019 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Tue Aug 20 16:18:50 EDT 2019 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XX.XX-20 190820161850699091-883813 76-6106ff15a69656f67a1318 4ea0482dff839619ca7b59df7 f6b650cb2ae4a59912-N/A-N/ A-20190820160322927307 |
| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.
STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.
STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.