Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

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:  August 20, 2019

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

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:

• Specimen Unacceptable
• Requirement - Disclaimer
• Requirement – Amend Description and Clarify Color of the Mark

 

SPECIMEN UNACCEPTABLE

 

Registration is refused because the specimen in International Class 30 is merely a photocopy of the drawing or a picture or rendering of the applied-for mark, and thus fails to show the applied-for mark in use in commerce with the goods and/or services for each international class.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); In re Chica, 84 USPQ2d 1845, 1848 (TTAB 2007); TMEP §§904, 904.07(a), 1301.04(g)(i).  An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods and/or services identified in the application or amendment to allege use.  15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a). 

 

Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, and displays associated with the actual goods at their point of sale.  See TMEP §§904.03 et seq.  Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods.  TMEP §904.03(i).  Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and webpages that show the mark used in the actual sale, rendering, or advertising of the services.  See TMEP §1301.04(a), (h)(iv)(C).  Specimens comprising advertising and promotional materials must show a direct association between the mark and the services.  TMEP §1301.04(f)(ii).

 

Applicant may respond to this refusal by satisfying one of the following for each applicable international class:

 

(1)        Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the goods and/or services identified in the application or amendment to allege use.  A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20:  “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.”  The substitute specimen cannot be accepted without this statement.

 

(2)        Amend the filing basis to intent to use under Section 1(b), for which no specimen is required.  This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.

 

For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

REQUIREMENT – DISCLAIMER

 

Applicant must provide a disclaimer of the unregistrable part(s) of the applied-for mark even though the mark as a whole appears to be registrable.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).  A disclaimer of an unregistrable part of a mark will not affect the mark’s appearance.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).

 

In this case, applicant must disclaim the wording “COLORADO” because it is not inherently distinctive.  These unregistrable term(s) are at best merely descriptive and primarily geographically descriptive of applicant’s goods. 

 

The nondistinctive wording “POPCORN” merely describes a feature of applicant’s goods.  See 15 U.S.C. §§1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012).

 

The attached evidence from Merriam Webster dictionary shows the wording “POPCORN” means corn having kernels that upon exposure to heat burst open to form a white starchy mass.  See http://www.merriam-webster.com/dictionary/popcorn.  In its identification, applicant indicates that its goods are chocolate and chocolates.  Additionally, the attached evidence shows that “popcorn” is a common featured ingredient of goods similar to applicant’s identified goods.  See http://www.foodnetwork.com/recipes/chocolate-peanut-butter-bar-with-spiced-sugar-popcorn-2239539 (Chocolate bar recipe featuring popcorn as an ingredient); http://www.myrecipes.com/recipe/chocolate-popcorn-bark (Chocolate bar recipe featuring popcorn as an ingredient); http://www.instacart.com/costco/products/17352757-hello-delicious-dark-chocolate-popcorn-bark-20-oz (Offering chocolate bar featuring popcorn).   Therefore, the wording “POPCORN” merely describes a common featured ingredient of applicant’s goods and therefore must be disclaimed.

 

In addition, the nondistinctive wording “COLORADO” is primarily geographically descriptive of the origin of applicant’s goods.  See 15 U.S.C. §§1052(e)(2); In re Societe Generale des Eaux Minerales de Vittel S.A., 824 F.2d 957, 959, 3 USPQ2d 1450, 1451-52 (Fed. Cir. 1987); TMEP §§1210.01(a), 1210.06(a), 1213.03(a). 

 

The attached evidence from Collins dictionary shows that “COLORADO” is a generally known geographic place or location, namely, a state in the western United States.  See http://www.collinsdictionary.com/us/dictionary/english/colorado; see also TMEP §§1210.02 et seq.  The goods for which applicant seeks registration originate in this geographic place or location as shown by applicant’s address.  See Application pg. #1; see also TMEP §1210.03.  Because the goods originate in this place or location, a public association of the goods with the place is presumed.  See In re Hollywood Lawyers Online, 110 USPQ2d 1852, 1858 (TTAB 2014) (citing In re Spirits of New Merced, LLC, 85 USPQ2d 1614, 1621 (TTAB 2007)); TMEP §§1210.02(a) 1210.04. 

 

Applicant may respond to this issue by submitting a disclaimer in the following format:

 

No claim is made to the exclusive right to use “COLORADO” and “POPCORN” apart from the mark as shown.

 

For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.

 

REQUIREMENT – AMEND DESCRIPTION AND CLARIFY COLOR OF THE MARK

 

Applicant must clarify whether color is being claimed as a feature of the mark.  See 37 C.F.R. §§2.37, 2.52(b)(1), 2.61(b); TMEP §§807.07(a) et seq.  Applicant submitted a black-and-white drawing of the mark; however, the description of the mark references colors other than or in addition to black and white.  The mark in the drawing and in the description must match.  See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §§807.07 et seq.

 

Additionally, applicant must remove use of the forward slash punctuation in the mark description because it is unnecessary punctuation that renders the mark description unclear.  Descriptions must be clear, accurate, concise, and identify only those literal and design elements appearing in the mark by using succinct phrases.  See 37 C.F.R. §2.37; TMEP §§808.02, 808.03(d). 

 

Accordingly, to clarify the mark description and whether color is claimed as a feature of the mark, applicant may satisfy one of the following:

 

(1)        If color is not a feature of the mark, applicant must submit an amended description of the mark that omits any reference of color.  See TMEP §§807.07(a)(ii), 808.02.  The following is suggested, if accurate: 

 

The mark consists of the design of five pieces of popcorn appearing above the stylized wording “COLORADO KERNELS”, that is above a stylized design of mountains that is above the stylized wording “POPCORN DELIGHTS”.

 

(2)        If color is a feature of the mark, applicant must submit a (a) new drawing showing the mark in color, (b) list all the colors that are a feature of the mark, and (c) amend the description, if appropriate, to specify where all the colors appear in the literal and design elements of the mark.  37 C.F.R. §§2.37, 2.52(b)(1); see TMEP §807.07(a)-(a)(ii).  Generic color names must be used to describe the colors in the mark, e.g., red, yellow, blue.  TMEP §807.07(a)(i)-(ii).  If black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark, applicant must so specify in the description.  See TMEP §807.07(d). 

 

The following color claim and description are suggested, if accurate:

 

Color claim:  “The colors red, yellow and blue are claimed as a feature of the mark.”

 

Description:  “The mark consists of the design of five yellow pieces of popcorn appearing above the stylized wording “COLORADO KERNELS” in red that is above a stylized design of blue mountains that is above the stylized wording “POPCORN DELIGHTS” in red.

 

For more information about drawings and instructions on how to submit a new drawing and a color claim and/or description online using the Trademark Electronic Application System (TEAS) form, see the Drawing webpage.

 

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 nonfinal Office action  

 

/Rhoda Nkojo/

Examining Attorney

Law Office 117

(571)272-8468

Rhoda.Nkojo@USPTO.gov

 

 

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 August 20, 2019 for

U.S. Trademark Application Serial No. 88445801

 

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. 

 

 

Rhoda Nkojo

/Rhoda Nkojo/

Examining Attorney

Law Office 117

(571)272-8468

Rhoda.Nkojo@USPTO.gov

 

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 August 20, 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.”