To: | Invicta Watch Company of America, Inc. (bnatter@haugpartners.com) |
Subject: | U.S. Trademark Application Serial No. 88447509 - LAVENTA - A199-81 |
Sent: | October 02, 2019 04:10:23 PM |
Sent As: | ecom116@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88447509
Mark: LAVENTA
|
|
Correspondence Address:
|
|
Applicant: Invicta Watch Company of America, Inc.
|
|
Reference/Docket No. A199-81
Correspondence Email Address: |
|
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: October 02, 2019
This Office action is supplemental to and supersedes the previous Office action issued on July 8, 2019 in connection with this application.
Upon further consideration of the initial application, a NEW ISSUE has been identified. Please respond to the new issue below. The examining attorney apologizes for any inconvenience this may cause the applicant.
SUMMARY OF ISSUES applicant must address:
Applicant must respond to all issues raised in this Office action within six (6) months of the date of issuance of this Office action. 37 C.F.R. §2.62(a); see TMEP §711.02. If applicant does not respond within this time limit, the application will be abandoned. 37 C.F.R. §2.65(a).
TEAS PLUS STATUS LOST –ADDITIONAL FEE REQUIRED
Because applicant has not satisfied all the TEAS Plus application filing requirements, applicant must submit an additional processing fee of $125 per class. See 37 C.F.R §§2.6(a)(1)(v), 2.22(c); TMEP §819.04. The additional fee is required even if applicant later satisfies this requirement by submitting a translation and/or transliteration of the non-English wording and/or non-Latin characters in the mark.
SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
The applied-for mark is LAVENTA and identifies “Providing home shopping services in the field of general consumer merchandise by means of television and Internet” in International Class 35, and “Entertainment services, namely, multimedia production services; Entertainment services, namely, the provision of continuing programming featuring content relating to home shopping delivered by television and the Internet” in International Class 41.
Registration is refused because the applied-for mark merely describes the purpose of applicant’s services. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq. Specifically, the applied-for mark describes the purpose of applicant’s services, which is to provide goods for sale at a low price.
“Whether consumers could guess what the product [or service] is from consideration of the mark alone is not the test.” In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
Applicant’s mark is in Spanish, which is a common, modern language in the United States. In re Aquamar, Inc., 115 USPQ2d 1122 (TTAB 2015). The doctrine is applied when “the ordinary American purchaser” would “stop and translate” the foreign term into its English equivalent. Palm Bay, 396 F.3d at 1377, 73 USPQ2d at 1696 (quoting In re Pan Tex Hotel Corp., 190 USPQ 109, 110 (TTAB 1976)); TMEP §1209.03(g). The ordinary American purchaser includes those proficient in the foreign language. In re Spirits Int’l, N.V., 563 F.3d 1347, 1352, 90 USPQ2d 1489, 1492 (Fed. Cir. 2009); see In re Highlights for Children, Inc., 118 USPQ2d at 1271. In this case, the ordinary American purchaser would likely stop and translate the mark because the Spanish language is a common, modern language spoken by an appreciable number of consumers in the United States.
In this case, the attached translation from the SpanishDict shows that the term LA VENTA translates to “for sale” in English. See http://www.spanishdict.com/translate/a%20la%20venta; http://www.spanishdict.com/translate/la%20venta. And, the attached definition from the Merriam-Webster Dictionary shows that “for sale” means “available for purchase at a reduced price.” See http://www.merriam-webster.com/dictionary/sale. Accordingly, the direct English translation of the term “LAVENTA” in the mark is “for sale,” which describes the purpose of applicant’s services – to provide goods for sale.
Further, the attached evidence from QVC, the Home Shopping Network, and Shop HQ shows that the term “for sale” is commonly used by home shopping services and home shopping television and internet programs to describe shopping services that provide goods at a low price. See http://www.qvc.com/for-the-home/furniture/beds/_/N-17jsx/c.html; http://www.qvc.com/for-the-home/garden-center/garden-tools/_/N-19qpbk6/c.html; http://www.hsn.com/shop/treadmills/hf0185; http://www.hsn.com/shop/desks/ho0175; http://www.shophq.com/v/sale-and-clearance/?r=jewelry&q=gemstones&icid=LN4-_-J-_-GemstoneSaleClr-_-033019. Thus, the terms “on sale” describe the purpose of applicant’s services, which is to provide merchandise for sale at a low cost.
Finally, the minor design element does not lessen the descriptive nature of the applied for mark. Background designs in composite marks consisting of common geometric shapes, such as circles, ovals, squares, triangles, diamonds, and other geometric designs, are generally not regarded as marks for services absent a showing of distinctiveness in the design alone. In re Anton/Bauer Inc., 7 USPQ2d 1380, 1381 (TTAB 1988) (citing In re Raytheon Co., 202 USPQ 317 (TTAB 1979)); TMEP §1202.11; see also Seabrook Foods, Inc. v. Bar-Well Foods Ltd., 568 F.2d 1342, 1344, 196 USPQ 289, 291 (C.C.P.A. 1977). In this case the design element is merely a background carrier in the shape of a rectangle. Thus, the descriptive literal element in the applied-for mark is the dominant element of the mark.
For the forgoing reasons, the mark LAVENTA, as applied to the identified services, merely describes the purpose of the services, which is to provide goods for sale at a low cost. Accordingly, the proposed mark is merely descriptive, and registration is refused under Section 2(e)(1).
SUPPLEMENTAL REGISTER ADVISORY
If applicant files an acceptable allegation of use and also amends to the Supplemental Register, the application effective filing date will be the date applicant met the minimum filing requirements under 37 C.F.R. §2.76(c) for an amendment to allege use. TMEP §§816.02, 1102.03; see 37 C.F.R. §2.75(b). In addition, the undersigned trademark examining attorney will conduct a new search of the USPTO records for conflicting marks based on the later application filing date. TMEP §§206.01, 1102.03.
(1) Use of the registration symbol ® with the registered mark in connection with the designated goods and/or services, which provides public notice of the registration and potentially deters third parties from using confusingly similar marks.
(2) Inclusion of the registered mark in the USPTO’s database of registered and pending marks, which will (a) make it easier for third parties to find it in trademark search reports, (b) provide public notice of the registration, and thus (c) potentially deter third parties from using confusingly similar marks.
(3) Use of the registration by a USPTO trademark examining attorney as a bar to registering confusingly similar marks in applications filed by third parties.
(4) Use of the registration as a basis to bring suit for trademark infringement in federal court, which, although more costly than state court, means judges with more trademark experience, often faster adjudications, and the opportunity to seek an injunction, actual damages, and attorneys’ fees and costs.
(5) Use of the registration as a filing basis for a trademark application for registration in certain foreign countries, in accordance with international treaties.
See 15 U.S.C. §§1052(d), 1091, 1094; J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition §§19:33, 19:37 (rev. 4th ed. Supp. 2017).
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration. However, if applicant responds to the refusal, applicant must also respond to the requirement set forth below.
TRANSLATION REQUIREMENT
To permit proper examination of the application, applicant must submit an English translation of all wording in the mark that appears to be foreign. 37 C.F.R. §§2.32(a)(9), 2.61(b); TMEP §809. The following English translation is suggested: The English translation of “LAVENTA” in the mark is “FOR SALE”. TMEP §809.03. See attached translation evidence from http://www.spanishdict.com/translate/a%20la%20venta; http://www.spanishdict.com/translate/la%20venta.
ASSISTANCE
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
/Rebecca Eubank/
Rebecca Eubank
Examining Attorney
Law Office 116
571-270-5577
rebecca.eubank@uspto.gov
RESPONSE GUIDANCE