To: | HC Foods Co., Ltd. (tim@hcfoods.net) |
Subject: | U.S. Trademark Application Serial No. 88484708 - NUKE - N/A |
Sent: | September 13, 2019 08:40:24 AM |
Sent As: | ecom101@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88484708
Mark: NUKE
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Correspondence Address:
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Applicant: HC Foods Co., Ltd.
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Reference/Docket No. N/A
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
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.
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, 2.65(a); TMEP §§711, 718.03.
SEARCH OF OFFICE’S DATABASE OF MARKS - NO CONFLICTING 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 1 REFUSAL—OWNERSHIP REFUSAL
The attached evidence from applicant's own website makes clear that applicant is a “distributor… [that] has developed into one of the largest Asian foodstuff Importer/Distributor in California.” Note that a distributor, importer, or other distributing agent of the goods of a manufacturer or producer does not acquire a right of ownership in the manufacturer’s or producer’s mark merely because it moves the goods in trade. See In re Bee Pollen from Eng. Ltd., 219 USPQ 163 (TTAB 1983); Audioson Vertriebs - GmbH v. Kirksaeter Audiosonics, Inc., 196 USPQ 453 (TTAB 1977); Jean D’Albret v. Henkel-Khasana G.m.b.H., 185 USPQ 317 (TTAB 1975); In re Lettmann,183 USPQ 369 (TTAB 1974); Bakker v. Steel Nurse of America Inc., 176 USPQ 447 (TTAB 1972). A party that merely distributes goods bearing the mark of a manufacturer or producer is neither the owner nor a related-company user of the mark. See TMEP §1201.06(a).
An application must be filed by the party who owns or is entitled to use the mark as of the application filing date; otherwise, the application is void. 37 C.F.R. §2.71(d); see 15 U.S.C. §1051; Lyons v. Am. Coll. of Veterinary Sports Med. & Rehab., 859 F.3d 1023, 1027, 123 USPQ2d 1024, 1027 (Fed. Cir. 2017) (citing Aycock Eng’g, Inc. v. Airflite, Inc., 560 F.3d 1350, 1357, 90 USPQ2d 1301, 1305 (Fed. Cir. 2009); Holiday Inn v. Holiday Inns, Inc., 534 F.2d 312, 319 n.6, 189 USPQ 630, 635 n.6 (C.C.P.A. 1976)). TMEP §§1201, 1201.02(b).
Applications filed in the name of the wrong party cannot be cured by amendment or assignment. See 37 C.F.R. §2.71(d); TMEP §803.06. Instead, the owner must file a new application.
Because applicant does not appear to have been the owner of the mark or entitled to use the mark as of the filing date of the application, the applied-for mark must be refused under Trademark Act Section 1.
INFORMATION REQUIRED REGARDING OWNERSHIP OF MARK
(1) Provide a statement that a parent and wholly owned subsidiary relationship exists between the distributor and manufacturer.
(2) Provide one of the following documents if applicant is a United States distributor, importer, or other distributing agent for a foreign manufacturer or producer:
(a) A copy of an assignment from the foreign owner to applicant of all rights in the mark in the United States together with the business and goodwill appurtenant thereto
(b) A written consent from the foreign owner to applicant’s registration of the mark in the United States
(c) A written agreement or acknowledgment between the parties that applicant owns the mark in the United States
TMEP §1201.06(a); see 37 C.F.R. §2.61(b); In re Pharmacia Inc., 2 USPQ2d 1883, 1883-84 (TTAB 1987); In re Geo. J. Ball, Inc., 153 USPQ 426, 427-28 (TTAB 1967); TMEP §1201.04.
Pending an adequate response to the above, registration is refused because applicant does not own the mark for which registration is sought. Trademark Act Section 1, 15 U.S.C. §1051; see TMEP §§1201, 1201.06(a).
RESPONDING TO THIS OFFICE ACTION
If the applicant has any questions or needs assistance in responding to this Office action, please e-mail or telephone the assigned examining attorney.
Because of the legal technicalities and strict deadlines of the trademark application process, applicant may wish to hire a private attorney who specializes in trademark matters to assist in the process. The assigned trademark examining attorney can provide only limited assistance explaining the content of an Office action and the application process. USPTO staff cannot provide legal advice or statements about an applicant’s legal rights. TMEP §§705.02, 709.06. See Hiring a U.S.-licensed trademark attorney for more information.
How to respond. Click to file a response to this nonfinal Office action
/SMP/
Steven M. Perez
Trademark Attorney
Law Office 101
(571) 272-5888
steven.perez@uspto.gov
RESPONSE GUIDANCE