To: | Daniel Steven Roman (romanempirerecords@yahoo.com) |
Subject: | U.S. Trademark Application Serial No. 88436141 - ER - N/A |
Sent: | August 14, 2019 05:33:17 PM |
Sent As: | ecom107@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88436141
Mark: ER
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Correspondence Address: |
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Applicant: Daniel Steven Roman
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Reference/Docket No. N/A
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: August 14, 2019
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.
SEARCH RESULTS
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).
AMENDED COLOR CLAIM AND MARK DESCRIPTION REQUIRED
To clarify how black is being used in the mark, applicant may satisfy one of the following:
(1) If black is a feature of the mark, applicant must amend the color claim to include it and amend the description to identify where black and gold appear in the literal and/or design elements of the mark. The following color claim and description are suggested, if accurate:
Color claim: The colors gold and black are claimed as a feature of the mark.
Description: The mark consists of a branch containing gold and black leaves forming an arch over a backwards-facing gold letter “E” attached to a gold letter “R” sitting on a gold and black trapezoid containing gold abstract decorations on top of a stylized Roman temple with three arches, all against a black background.
(2) If black is not a feature of the mark, applicant must amend the description to state that black represents background, outlining, shading and/or transparent areas and are not part of the mark. The following description is suggested, if accurate:
The mark consists of a branch containing leaves formed by negative space with gold veins and outlining forming an arch over a backwards-facing gold letter “E” attached to a gold letter “R” sitting on a trapezoid formed by negative space outlined in gold containing gold abstract decorations on top of a stylized Roman temple with three arches. The color black indicates background, outlining, shading, and/or transparent areas and is not part of the mark.
TMEP §807.07(d).
ENTITY TYPE CLARIFICATION REQUIRED
If applicant is an individual, applicant should simply request that the legal entity be amended to “individual” and must indicate his country of citizenship for the record, for example, “United States.” TMEP §803.03(a). Alternatively, if applicant is a limited liability company, applicant must provide the correct name of the limited liability company and the U.S. state or foreign country of incorporation or organization. TMEP §803.03(h).
If, in response to the above request, applicant provides information indicating that it is not the owner of the mark, registration may be refused because the application was void as filed. See 37 C.F.R. §2.71(d); TMEP §§803.06, 1201.02(b). An application must be filed by the party who owns or is entitled to use the mark as of the application filing date. See 37 C.F.R. §2.71(d); TMEP §1201.02(b).
§2(F)-IN-PART CLAIM IN INTENT-TO-USE APPLICATION -- CLARIFICATION REQUIRED
Applicant asserted a claim of acquired distinctiveness under Trademark Act Section 2(f) in part as to the wording “RomanEmpire,” which does not appear in the applied-for mark. Applicant’s evidence consists of photographs of the applied-for mark on t-shirts, and photographs of a different mark on hats and shirts. Thus, applicant needs to clarify whether applicant intends to claim acquired distinctiveness in his application or if applicant inadvertently included this claim of acquired distinctiveness. See 37 C.F.R. §2.61(b); TMEP §814.
If applicant intends to maintain this claim, applicant must satisfy the requirements specified in the following paragraph. See TMEP §1212.09(a)-(b). If applicant does not intend to maintain this claim, applicant should request that the Section 2(f) claim be deleted from the application. See TMEP §1212.09(a).
An intent-to-use applicant who has used the same mark (i.e., the mark shown in the drawing in this application – not “RomanEmpire”) on related goods and/or services may assert a claim of acquired distinctiveness under Trademark Act Section 2(f) before filing an allegation of use, if applicant can establish that, as a result of applicant’s use of the same mark on other goods and/or services, the mark has become distinctive of the goods and/or services in the intent-to-use application, and that this previously created distinctiveness will transfer to the goods and/or services in the intent-to-use application when use in commerce begins. In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1347, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001); In re Binion, 93 USPQ2d 1531, 1538 (TTAB 2009); TMEP §1212.09(a).
The Trademark Trial and Appeal Board has set forth the following two requirements for showing that a mark in an intent-to-use application has acquired distinctiveness:
(1) Applicant must establish that the same mark has acquired distinctiveness as to the other goods and/or services, by submitting evidence such as ownership of an active prior registration for the same mark for sufficiently similar or related goods and/or services, a prima facie showing of acquired distinctiveness based on five years’ use of the same mark with related goods and/or services, or actual evidence of acquired distinctiveness for the same mark with respect to the other goods and/or services; and
(2) Applicant must show sufficient relatedness of the goods and/or services in the intent-to-use application and those for which the mark has acquired distinctiveness to warrant the conclusion that the previously created distinctiveness will transfer to the goods and/or services in the application upon use. The showing necessary to establish relatedness will be decided on a case-by-case basis and will depend upon the nature of the goods and/or services involved and the language used to identify them in the application.
TMEP §1212.09(a); see Kellogg Co. v. Gen. Mills Inc., 82 USPQ2d 1766, 1770-71 (TTAB 2007); In re Rogers, 53 USPQ2d 1741, 1744-45 (TTAB 1999).
AMENDED IDENTIFICATION OF GOODS REQUIRED
If applicant’s “clothing” is in International Class 25, applicant may amend the identification to insert the word “namely,” after “clothing” and then list the specific types of clothing items in that class (for example, shirts, pants, coats, and dresses).
Applicant may adopt the following identification in International Class 25, if accurate: Clothing, namely, shirts, sweaters, pants, shorts, and hats.
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.
POSSIBLE ORNAMENTATION REFUSAL (ADVISORY)
The following factors are considered when determining whether the public would perceive the applied-for mark as a trademark or merely as a decorative or ornamental feature: the commercial impression made by the mark on the specimen, any prior registrations of the same mark for other goods and/or services, promotion of the applied-for mark as a trademark, and the practices of the relevant trade. See In re The Todd Co., 290 F.2d 597, 599-600, 129 USPQ 408, 409-10 (C.C.P.A. 1961); In re Dimitri’s Inc., 9 USPQ2d 1666, 1668 (TTAB 1988); In re Paramount Pictures Corp., 213 USPQ 1111, 1115 (TTAB 1982); In re Jockey Int’l, Inc., 192 USPQ 579, 581-83 (TTAB 1976); TMEP §§1202.03 et seq. For more information, see the Ornamental Refusal webpage.
TRANSLATION AND TRANSLITERATION WILL NOT BE PRINTED
NAME OF INDIVIDUAL STATEMENT NOT NEEDED
For this application to proceed further, applicant must explicitly address each refusal and/or 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.
In addition, because applicant filed a TEAS RF application, applicant must respond online using the Trademark Electronic Application System (TEAS) to avoid incurring an additional fee. See 37 C.F.R. §2.23(b)(1), (c).
Because of the legal technicalities and strict deadlines of the trademark application process, applicant may wish to hire a private attorney who specializes in trademark matters to assist in the process. The assigned trademark examining attorney can provide only limited assistance explaining the content of an Office action and the application process. USPTO staff cannot provide legal advice or statements about an applicant’s legal rights. TMEP §§705.02, 709.06. See Hiring a U.S.-licensed trademark attorney for more information.
Beware of misleading notices sent by private companies about your application. Private companies not associated with the USPTO often use public information provided in USPTO trademark applications to mail and email trademark-related offers and notices – most of which require fees. These companies often have names similar to the USPTO. All official USPTO correspondence will only be emailed from the domain “@uspto.gov.” For a current list of companies the USPTO has received complaints about, information on how to identify these offers and notices, and what to do if you receive one, see the misleading notices webpage.
HOW TO RESPOND. Click to file a response to this nonfinal Office action
/Kathy de Jonge/
Trademark Examining Attorney
Law Office 107
(571) 272-9152
kathleen.dejonge@USPTO.gov (informal use only)
RESPONSE GUIDANCE