Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  November 01, 2019

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on October 4, 2019.

 

In a previous Office action(s) dated July 19, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following:  Trademark Act Section 2(c) for failure to provide the signed consent of a living individual. 

 

Based on applicant’s response, the examining attorney finds that the proposed amendment to the identification of goods, which proposes to move goods from applicant’s copending application number 88441353 pursuant to TMEP § 1402.08 is accepted. See TMEP §§713.02, 714.04. 

 

Further, the trademark examining attorney maintains and now makes FINAL the refusal(s) and/or requirement(s) in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

• Registration is Refused: Consent of Living Individual Required

 

FINAL REFUSAL

CONSENT OF LIVING INDIVIDUAL REQUIRED

For the reasons set forth below, the refusal under Trademark Act Section 2(c) is now made final.  See Trademark Act Section 2(c), 15 U.S.C. §1052(c); TMEP §1206; see In re Nieves & Nieves LLC, 113 USPQ2d 1639, 1649-50 (TTAB 2015); In re Hoefflin, 97 USPQ2d 1174, 1175-76 (TTAB 2010).

 

In the response to Office action filed on October 4, 2019, applicant asserted that its claim of ownership of other registrations was sufficient to satisfy the consent required in this case under TMEP §1206.04.  Applicant’s reliance on this provision is misplaced, and the claim of ownership of these registrations is not sufficient to overcome the instant refusal.  In particular, applicant asserts “Per TMEP Section 1206.04(b), a new consent is not required if consent is of record in a valid registration owned by Applicant.”  The examining attorney assumes applicant intended to reference TMEP Section 1206.04(c), which provides “An applicant does not have to submit a new consent if a consent to register is already part of the record in the file of a valid registration for a mark comprised in whole or in part of the same name, portrait, or signature for the same goods and/or services, or such goods and/or services as would encompass those in the subsequent application.”  TMEP §1206.04(c) (emphasis added); In re McKee Baking Co., 218 USPQ 287, 288 (TTAB 1983).” 

 

The examining attorney finds that none of the registrations claimed by applicant include the same or encompassing goods as the alcoholic beverages in International Class 033 identified in the instant application.  See attached U.S Registration Nos. 3599755, 2495866, 3411896, and 1797058, which are specifically referenced by applicant in the response and are for goods and services in International Classes 014, 024, 025, and 035, none of which include beverages of any kind.  Indeed, on November 1, 2019, the examining attorney conducted the below search in the x-search database and found that there are no registered marks containing the name “VERA WANG” registered in International Classes 032 or 033:

 

1         0       (*verawang* "vera wang" *vera?wang*)[bi,ti] and live[ld] and registrant[on] and ("032" "033")[ic]

 

Consent of the individual named in the mark is therefore required and the instant refusal is thus made final.

 

Registration is refused because the applied-for mark consists of or comprises a name, portrait, or signature identifying a particular living individual whose written consent to register the mark is not of record.  Trademark Act Section 2(c), 15 U.S.C. §1052(c); TMEP §1206; see In re Nieves & Nieves LLC, 113 USPQ2d 1639, 1649-50 (TTAB 2015); In re Hoefflin, 97 USPQ2d 1174, 1175-76 (TTAB 2010).

 

For purposes of Section 2(c), a name in a mark identifies a particular living individual if the person bearing the name will be associated with the mark as used on the goods or services because:  “(1) the person is so well known that the public would reasonably assume a connection between the person and the goods or services; or (2) the individual is publicly connected with the business in which the mark is used.”  In re Nieves & Nieves LLC, 113 USPQ2d 1639, 1650 (TTAB 2015); see In re Hoefflin, 97 USPQ2d 1174, 1175-76 (TTAB 2010); Krause v. Krause Publ’ns, Inc., 76 USPQ2d 1904, 1909-10 (TTAB 2005).

 

A determination that a person is publicly connected with the business in which the mark is being used may be based on evidence that the named individual is well known in the relevant field of goods or services, is associated in some manner with the applicant (e.g., the named individual is a corporate officer or partner of the applicant), and/or is actually connected to the goods or services at issue (e.g., the named individual invented the identified goods in the application), and, as a result, the relevant public will recognize or perceive the name as identifying that particular individual.  See Krause v. Krause Publ’ns Inc., 76 USPQ2d 1904, 1909-10 (TTAB 2005); In re Sauer, 27 USPQ2d 1073, 1075 (TTAB 1993); TMEP §1206.02. 

 

In this case, the attached evidence demonstrates that Vera Wang is a living individually publicly associated with applicant’s business.  See attached previously attached website screenshots from VeraWang.com/company/ and additional website screenshot evidence attached hereto from Wikipedia.org, FamousFashionDesigners.org, and BusinessofFashion.com.

 

The refusal under Section 2(c) will be withdrawn if applicant provides both of the following:

 

(1)       A statement that the name shown in the mark identifies Vera Wang, a living individual whose consent is of record. 

 

(2)       A written consent, personally signed by the individual whose name, signature, or portrait appears in the mark, authorizing applicant to register the identifying matter as a trademark and/or service mark with the USPTO; for example, an applicant may use, if applicable, the following:  “I, Vera Wang, consent to the use and registration of my name as a trademark and/or service mark with the USPTO.”

 

See TMEP §§813, 813.01(a), 1206.04(a).

 

Applicant is advised that the written consent must include a statement of the party’s consent to applicant’s registration, and not just the use, of the identifying matter as a trademark.  See Krause v. Krause Publ’ns, Inc., 76 USPQ2d 1904, 1912-13 (TTAB 2005); In re New John Nissen Mannequins, 227 USPQ 569, 571 (TTAB 1985); TMEP §1206.04(a).

 

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 final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB)

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

/Rachel E. Desjardins/

Examining Attorney

Trademark Law Office 123

Phone: (571) 270-0104

Email: Rachel.Desjardins@USPTO.gov

(Informal communications only – Do not respond to Office action via email.)

 

 

 

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.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on November 01, 2019 for

U.S. Trademark Application Serial No. 88441355

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Rachel E. Desjardins/

Rachel E. Desjardins

Examining Attorney

Trademark Law Office 123

Phone: (571) 270-0104

 

Email: Rachel.Desjardins@USPTO.

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from November 01, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond.

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”