To: | Marvel Characters, Inc. (trademarks@disney.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88394359 - SHANG-CHI - N/A |
Sent: | 6/26/2019 4:35:15 PM |
Sent As: | ECOM114@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88394359
MARK: SHANG-CHI
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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: Marvel Characters, Inc.
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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: 6/26/2019
SEARCH OF OFFICE’S DATABASE OF MARKS
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
SUMMARY OF ISSUES
1. Significance Inquiry
2. Amended Identification of Goods Required
SIGNIFICANCE INQUIRY
To permit proper examination of the application, applicant must provide the following information:
(1) Explain whether the wording in the mark “SHANG-CHI” has any meaning or significance in the industry in which the goods and/or services are manufactured/provided, any meaning or significance as applied to applicant’s goods and/or services, or if such wording is a term of art within applicant’s industry.
(2) Explain whether this wording has any meaning in a foreign language.
(3) Submit an English translation of all foreign wording in a mark and a transliteration (the phonetic spelling of the pronunciation, in Latin characters) of all non-Latin characters in a mark. If the wording does not have meaning in a foreign language, applicant should so specify.
The format for an English translation and transliteration: “The English translation of “SHANG-CHI” is “RISING OF THE SPIRIT”.
The format for when there is no English translation or meaning of the transliteration: “The wording “SHANG-CHI” has no meaning in a foreign language.”
See attached evidence from tvtropes.org; 37 C.F.R. §§2.32(a)(9)-(a)(10), 2.61(b); TMEP §§809-809.03, 814.
Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.
AMENDED IDENTIFICATION OF GOODS REQUIRED
The wording “processed foods;” “fruit peels and preserves;” “fruit snacks;” in the identification is indefinite and must be clarified because it fails to identify specific goods. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “dairy products” in the identification is indefinite, too broad, and must be clarified because it fails to identify specific goods and could include goods in more than one international class (e.g., cream being dairy products in International Class 029, ice cream in International Class 030). Id.
The wording “fruits” in the identification is indefinite, too broad, and must be clarified because it fails to identify specific goods and could include goods in more than one international class (e.g., fresh fruits in International Class 031, processed fruits in International Class 029). Id.
The wording “fish, poultry and game” in the identification is indefinite, too broad, and must be clarified because it fails to identify specific goods and could include goods in more than one international class (e.g., live fish in International Class 031, poultry in International Class 029). Id.
The wording “vegetables” in the identification is indefinite, too broad, and must be clarified because it fails to identify specific goods and could include goods in more than one international class (e.g., fresh vegetables in International Class 031, processed vegetables in International Class 029). Id.
Applicant may adopt the following wording, if accurate:
§ “Processed foods, namely, __________ {indicate particular type of processed food in International Class 029, e.g., processed citrus fruit, processed fish, processed poultry}; banana chips; butter; butter substitutes; candied fruit; cheese and cracker combinations; chili; dairy products, namely, __________ {indicate specific dairy products in International Class 029, e.g., milk, dairy based spreads}; dips; dried fruit-based snacks; eggs; frozen, prepared or packaged entrees or meals consisting primarily of meat, fish, poultry or vegetables; frozen, prepared or packaged vegetable-based entrees; processed fruits; fruit peels and fruit preserves; fruit salads; fruit-based snack food; fruit snacks, namely, __________ {candied fruit snacks, dehydrated fruit snacks, fruit-based snack foods}; hamburgers; hot dogs; jams; jellies; margarine; marmalades; meat; fish, poultry and game, not live; nuts, namely, __________ {indicate specific types of nuts in International Class 029, e.g., seasoned nuts, processed nuts}; nut butters; pickles; potato chips; potato salad; potato-based snack foods; processed, canned, bottled, dried, frozen, cooked, or preserved fruits and vegetables; raisins; soup mixes; soups; processed vegetables; veggie burger patties,” in International Class 029.
§ “Applesauce,” in International Class 030.
Note that proposed changes are indicated in bold. Some items require applicant to include more complete information. These are designated with a blank space ______ followed by bold braces { } and italicized explanatory text. The information in the braces is suggested as an example for applicant to follow, not to merely be “cut and pasted”. Furthermore, no braces should be included in applicant’s amended identification. Applicant should also note that the above identification is merely a suggestion and applicant is responsible for providing an accurate and acceptable identification.
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
Multiple-Class Application Requirements
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in at least 2 classes; however, applicant submitted a fee(s) sufficient for only 1 class(es). Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
RESPONSE GUIDELINES
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.
/Breanna Freeman/
Examining Attorney
Law Office 114
(571) 272-7099
breanna.freeman@uspto.gov
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.