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:  July 05, 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.  

 

 

How to respond.  Click to file a response to this nonfinal Office action  

 

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

 

SUMMARY OF ISSUES:

• REFUSAL TO REGISTER -- FALSE CONNECTION
• REFUSAL TO REGISTER -- DESCRIPTIVE MARK
• STATEMENT REQUIRED -- CONNECTION WITH MONTAUK TRIBE
• AMENDED IDENTIFICATION OF SERVICES REQUIRED
• MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

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).

 

REFUSAL TO REGISTER – FALSE CONNECTION

Registration is refused because the applied-for mark consists of or includes matter which may falsely suggest a connection with the Montauk Tribe of Indians.  Trademark Act Section 2(a), 15 U.S.C. §1052(a).  Although the Montauk Tribe is not the applicant and is not connected with the services provided by applicant under the applied-for mark, the historic Montauk or Montaukett Indians are sufficiently well-known that consumers would presume a connection.  See id.

 

Under Trademark Act Section 2(a), the registration of a mark that “consists of or comprises matter that may falsely suggest a connection with persons, institutions, beliefs, or national symbols” is prohibited.  In re Pedersen, 109 USPQ2d 1185, 1188 (TTAB 2013).  To establish that an applied-for mark falsely suggests a connection with a person or an institution, the following is required:

 

(1)       The mark sought to be registered is the same as, or a close approximation of, the name or identity previously used by another person or institution.

 

(2)       The mark would be recognized as such, in that it points uniquely and unmistakably to that person or institution.

 

(3)       The person or institution identified in the mark is not connected with the goods sold or services performed by applicant under the mark.

 

(4)       The fame or reputation of the named person or institution is of such a nature that a connection with such person or institution would be presumed when applicant’s mark is used on its goods and/or services.

 

In re Pedersen, 109 USPQ2d at 1188-89; In re Jackson Int’l Trading Co., 103 USPQ2d 1417, 1419 (TTAB 2012); TMEP §1203.03(c)(i); see also Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imps. Co., 703 F.2d 1372, 1375-77, 217 USPQ 505, 508-10 (Fed. Cir. 1983) (providing foundational principles for the current four-part test used to determine the existence of a false connection).

 

The term at issue need not be the actual, legal name of the party falsely associated with applicant’s mark to be unregistrable under Section 2(a).  TMEP §1203.03; see, e.g., Hornby v. TJX Cos., 87 USPQ2d 1411, 1417, 1424 (TTAB 2008) (finding TWIGGY to be the nickname of professional model Lesley Hornby); Buffett v. Chi‑Chi’s, Inc., 226 USPQ 428, 429-30 (TTAB 1985) (finding MARGARITAVILLE to be the persona of singer Jimmy Buffett).  The term must, however, be so uniquely and unmistakably associated with the named party as to constitute that party’s name or identity.  TMEP §1203.03; see, e.g., In re Cotter & Co., 228 USPQ 202, 204-05 (TTAB 1985); Buffett v. Chi‑Chi’s, Inc., 226 USPQ at 429.

 

In this case, applicant has applied to register the mark “MONTAUK TRIBE OF INDIANS” for “Association services, namely, promoting the interests of the Montauk Tribe of Indians and members of the Montauk Tribe of Indians. Outreach in the nature of providing information in the field of the tribal culture. Association services, namely, promoting the interests and welfare of members of an Indian tribe.”

 

The Montauk Tribe of Indians, or Montaukett Indians, are seeking recognition in New York State.  See attached evidence from http://www.27east.com/news/article.cfm/Montauk/561927/The-Montaukett-Indians-May-Soon-Be-Recognized-By-New-York-State.  A small group of Montauk Indians reside in the Long Island region of New York.  See attached evidence from http://accessgenealogy.com/new-york/montauk-tribe.htm.  The Montauk have also filed a petition for federal recognition.  See attached New York page from http://www.aaanativearts.com/petitioners-list-for-federal-recognition-by-state.

 

Given that applicant is an individual person, and not the Montauk Tribe of Indians, registration must be refused on grounds that the applied-for mark falsely suggests a connection with the Indian tribe named in the mark.

 

Applicant should note the following additional ground for refusal.

 

REFUSAL TO REGISTER – DESCRIPTIVE MARK

Registration is refused because the applied-for mark merely describes a feature 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.

 

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s services.  TMEP §1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)). 

 

Applicant has applied to register the mark “MONTAUK TRIBE OF INDIANS” for “Association services, namely, promoting the interests of the Montauk Tribe of Indians and members of the Montauk Tribe of Indians. Outreach in the nature of providing information in the field of the tribal culture. Association services, namely, promoting the interests and welfare of members of an Indian tribe.”  The applied-for mark describes the subject matter of applicant’s association services and information services. 

 

The Montauk Tribe of Indians, is seeking recognition in New York State.  See attached evidence from http://www.27east.com/news/article.cfm/Montauk/561927/The-Montaukett-Indians-May-Soon-Be-Recognized-By-New-York-State.  A small group of Montauk Indians reside in the Long Island region of New York.  See attached evidence from http://accessgenealogy.com/new-york/montauk-tribe.htm.  Given that applicant’s association services and information services involve the Montauk Tribe of Indians, the proposed mark merely describes the subject matter of the information and the subject matter and beneficiaries of the association services.  Accordingly, registration on the Principal Register must be refused under Section 2(e)(1) of the Trademark Act.

 

AMENDMENT TO SUPPLEMENTAL REGISTER (ADVISORY)

Although an amendment to the Supplemental Register would normally be an appropriate response to the descriptiveness refusal, such a response is not appropriate in the present case.  The instant application was filed under Trademark Act Section 1(b) and is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use meeting the requirements of 37 C.F.R. §2.76 has been timely filed.  37 C.F.R. §2.47(d); TMEP §§816.02, 1102.03.

 

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.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusals by submitting evidence and arguments in support of registration.

 

If applicant responds to the refusals, applicant must also respond to the requirements set forth below.

 

STATEMENT REQUIRED – CONNECTION WITH MONTAUK TRIBE OF INDIANS

Due to the fact that there is no information in the application record regarding a connection with applicant, applicant must specify whether the person or institution named in the mark has any connection with applicant’s services, and if so, must describe the nature and extent of that connection.  See 37 C.F.R. §2.61(b); TMEP §1203.03(c)(i). 

 

AMENDED IDENTIFICATION OF SERVICES REQUIRED

THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE SERVICES SPECIFIED THEREIN

 

The wording “Outreach in the nature of providing information in the field of the tribal culture” in the identification of services for International Class 35 must be clarified because it is too broad and could include services in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass providing information relating to the history of a particular tribal culture or providing information relating to diverse tribal cultures in International Class 41, and/or providing information relating to a specific ethnic culture in International Class 45.  Applicant must delete this wording from International Class 35 because it does not identify a type of business information.  If desired, applicant may clarify the nature of the information of the field of tribal culture and re-classify the services in the appropriate international class, as indicated below.

 

Applicant may substitute the following wording, if accurate: 

 

INTERNATIONAL CLASS 35:  Association services, namely, promoting the interests of the Montauk Tribe of Indians and members of the Montauk Tribe of Indians; Association services, namely, promoting the interests and welfare of members of an American Indian tribe

 

INTERNATIONAL CLASS 41:  Providing information in the field of the history of the Montauk Indian tribal culture

 

INTERNATIONAL CLASS 45:  Providing information in the field of a specific ethnic culture, namely, the Montauk Indian tribal culture

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e).

 

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

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(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 already paid (view the USPTO’s current fee schedule).  The application identifies services that are classified in at least three classes; however, applicant submitted a fee sufficient for only one class).  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

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). 

 

ATTORNEY

Because of the legal technicalities and strict deadlines involved in the USPTO application process, applicant may wish to hire a private attorney specializing in trademark matters to represent applicant in this process and provide legal advice.  Although the undersigned trademark examining attorney is permitted to help an applicant understand the contents of an Office action as well as the application process in general, no USPTO attorney or staff is permitted to give an applicant legal advice or statements about an applicant’s legal rights.  TMEP §§705.02, 709.06. 

 

For attorney referral information, applicant may consult the American Bar Association’s Consumers’ Guide to Legal Help; an online directory of legal professionals, such as FindLaw®; or a local telephone directory.  The USPTO, however, may not assist an applicant in the selection of a private attorney.  37 C.F.R. §2.11.

 

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. 

 

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. 

 

 

/Kathy de Jonge/

Trademark Examining Attorney

Law Office 107

(571) 272-9152

kathleen.dejonge@USPTO.gov (informal use only)

 

 

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 July 05, 2019 for

U.S. Trademark Application Serial No. 88464205

 

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. 

 

 

/Kathy de Jonge/

Trademark Examining Attorney

Law Office 107

(571) 272-9152

kathleen.dejonge@USPTO.gov (informal use only)

 

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 July 05, 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.”