To: | Soto, Angel Ortega (profangelortega@hotmail.com) |
Subject: | U.S. Trademark Application Serial No. 88492613 - TEXANS OUTDOOR LIGHTING - N/A |
Sent: | September 17, 2019 05:30:19 PM |
Sent As: | ecom121@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. 88492613
Mark: TEXANS OUTDOOR LIGHTING
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Correspondence Address:
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Applicant: Soto, Angel Ortega
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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 17, 2019
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.
· PRIOR-FILED APPLICATION ADVISORY
· SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
· OPTION TO AMEND TO SUPPLEMENTAL REGISTER
· DISCLAIMER REQUIRED IF AMENDING THE APPLICATION
· TO THE SUPPLEMENTAL REGISTER
· AMENDED IDENTIFICATION OF SERVICES REQUIRED
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
Upon receipt of applicant’s response resolving the following refusal and requirement, action on this application will be suspended pending the disposition of the above U.S. Application Serial No. 37 C.F.R. §2.83(c); TMEP §§716.02(c), 1208.02(c).
Registration is refused because the applied-for mark merely describes the intended user and characteristic 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.
In this case, the wording “TEXANS” identifies people from Texas. See attached evidence from http://www.collinsdictionary.com/dictionary/english/texan. Applicant is in Texas, as indicated by its application, so its customers are presumably, in large part, Texans. The other wording in the mark “OUTDOOR LIGHTING” simply describes that applicant’s services are focused on outdoor lighting. In particular, the services are identified as “landscape lighting service installations.” The specimen of record shows that applicant “specialize[s] in outdoor lighting.” Altogether, the wording in the mark indicates that applicant provides outdoor lighting for Texans.
The applied-for mark is therefore refused registration on the Principal Register.
(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).
Applicant is advised that, if the application is amended to seek registration on the Principal Register under Trademark Act Section 2(f) or on the Supplemental Register, applicant will be required to disclaim “OUTDOOR LIGHTING” because such wording appears to be generic in the context of applicant’s 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 “OUTDOOR LIGHTING” 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.
Applicant must also address the following requirement.
The wording “Landscape Lighting Service Installations” in the identification of services is indefinite and must be clarified to specify the common commercial or generic name of the services. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. In particular, the wording “installations” rather than “installation” is typically used to describe lighting installations which are classified in Class 11, as they are lighting goods.
Applicant may substitute the following wording, if accurate:
Class 37: Landscape lighting installation
The applicant should also note the following when amending the identifications:
ASSISTANCE
LEGAL COUNSEL
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.
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
/Valeriya Painter/
Examining Attorney
Law Office 121
(571) 270-7132
valeriya.painter@uspto.gov
RESPONSE GUIDANCE