To: | AMERICAN QUARTER HORSE ASSOCIATION (kmatticks@lcalawfirm.com) |
Subject: | U.S. Trademark Application Serial No. 88483291 - AMERICAN QUARTER HORSE AFFILIATE - AQHA-27-1 |
Sent: | September 13, 2019 06:21:52 PM |
Sent As: | ecom128@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88483291
Mark: AMERICAN QUARTER HORSE AFFILIATE
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Correspondence Address: |
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Applicant: AMERICAN QUARTER HORSE ASSOCIATION
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Reference/Docket No. AQHA-27-1
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: September 13, 2019
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).
SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
In this case, the applied-for mark is “AMERICAN QUARTER HORSE AFFILIATE” used in connection “To indicate membership in an association of affiliated organizations interested in quarter horses”. The attached evidence from Wikipedia and American Heritage Dictionary shows that “AMERICAN QUARTER HORSE” refers to “an American breed of horse that excels at sprinting short distances” and “AFFILIATE” means “a person, organization, or establishment associated with another as a subordinate, subsidiary, or member”. Therefore, the combination of the terms “AMERICAN QUARTER HORSE AFFILIATE” immediately conveys to consumers that applicant’s membership services involve organizations affiliated with one another with an interest or relationship with American Quarter Horses.
As demonstrated above, the descriptive terms “AMERICAN QUARTER HORSE” and “AFFILIATE” are understood to convey a very specific characteristic of services; therefore, the applied-for mark “AMERICAN QUARTER HORSE AFFILIATE” will immediately convey to consumers that applicant’s membership services involve membership to an association of affiliated organizations interested in American Quarter Horses. Considering the above, the applied-for mark is refused registration under Trademark Act Section 2(e)(1).
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.
SUPPLEMENTAL REGISTER ADVISORY
(1) STATEMENTS: The following statements: “The applicant is the owner of the mark sought to be registered.” and “The applicant is using the mark in commerce on or in connection with all the goods/services in the application or notice of allowance, or as subsequently modified.”
(2) DATES OF FIRST USE: The date of first use of the mark anywhereon or in connection with the goods and/or services, and the date of first use of the mark in commerceas a trademark or service mark. See more information about dates of use.
(3) GOODS AND/OR SERVICES: The goods and/or services specified in the application.
(4) SPECIMEN: A specimen showing how applicant uses the mark in commerce for each class of goods and/or services for which use is being asserted. If a single specimen supports multiple classes, applicant should indicate which classes the specimen supports rather than providing multiple copies of the same specimen. See more information about specimens.
(5) FEE(S): A filing fee for each international class of goods and/or services for which use is being asserted (find current fee information).
(6) VERIFICATION: Verification of (1) through (4) above in an affidavit or signed declaration under 37 C.F.R. §2.20. See more information about verification.
See 37 C.F.R. §2.76(b); TMEP §1104.08.
An amendment to allege use may be filed online via the Trademark Electronic Application System (TEAS). Filing an amendment to allege use is not considered a response to an Office action. 37 C.F.R. §2.76(h); TMEP §1104. An applicant must file a separate response to any outstanding Office action. TMEP §1104; see 37 C.F.R. §2.76(h).
Disclaimer Required if Amending to 1(a) and Supplemental Register. Applicant is advised that, if an acceptable allegation of use and an amendment to the Supplemental Register are filed, applicant will be required to disclaim “AFFILIATE” because such wording appears to be generic in the context of applicant’s membership services. See 15 U.S.C. §1056(a); In re Wella Corp., 565 F.2d 143, 144, 196 USPQ 7, 8 (C.C.P.A. 1977); In re Creative Goldsmiths of Wash., Inc., 229 USPQ 766, 768 (TTAB 1986); TMEP §1213.03(b).
Applicant may submit a disclaimer in the following format:
No claim is made to the exclusive right to use “AFFILIATE” apart from the mark as shown.
TMEP §1213.08(a)(i).
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
RESPONSE GUIDELINES
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
Arriola, Kimberly
/Kimberly C. Arriola/
Attorney Advisor
Law Office 128
(571) 270-7984
kimberly.arriola@uspto.gov
RESPONSE GUIDANCE