To: | Zuffa, LLC (TRADEMARKSLV@DICKINSONWRIGHT.COM) |
Subject: | U.S. Trademark Application Serial No. 88494186 - UFC UNFILTERED - 066108-72337 |
Sent: | August 20, 2019 03:01:00 PM |
Sent As: | |
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. 88494186
Mark: UFC UNFILTERED
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Correspondence Address: JENNIFER KO CRAFT; MICHAEL N. FEDER; JOH 8363 WEST SUNSET ROAD, SUITE 200
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Applicant: Zuffa, LLC
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Reference/Docket No. 066108-72337
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: August 20, 2019
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(a), 2.65(a); TMEP §§711, 718.03.
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).
DISCLAIMER REQUIRED
In this case, applicant must disclaim the wording “UNFILTERED” because it is not inherently distinctive. These unregistrable term(s) at best are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
“Unfiltered” can be defined as “not having been toned down, censored, or edited.” See attached dictionary evidence. Applicant’s specimen reflects this feature – its podcasts are listed as having “explicit” material. The podcasts therefore appear to have not been edited for profanity.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “UNFILTERED” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
ADVISORY
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
If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
/med/
Michelle E. Dubois
Trademark Attorney
U.S. Patent & Trademark Office
Law Office 107
(571) 272-5887
michelle.dubois@uspto.gov
RESPONSE GUIDANCE