To: | The Fragrance Outlet, Inc. (trademark@honigman.com) |
Subject: | U.S. Trademark Application Serial No. 88536830 - AMERICAN SPIRIT - 233570452994 |
Sent: | October 17, 2019 02:26:10 PM |
Sent As: | ecom117@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88536830
Mark: AMERICAN SPIRIT
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Correspondence Address: BLOOMFIELD HILLS, MI 48304-5151
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Applicant: The Fragrance Outlet, Inc.
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Reference/Docket No. 233570452994
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: October 17, 2019
SUMMARY OF ISSUES:
· Prior-Filed Application
· Disclaimer Required
PRIOR-FILED APPLICATION
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.
DISCLAIMER REQUIRED
In this case, applicant must disclaim “AMERICAN” 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).
Merriam-Webster dictionary defines “AMERICAN” as “of or relating to America”. See attached. The attached evidence from Wikipedia page for “AMERICAN” indicates that this wording “generally refers to persons or things related to the United States of America”. See attached. Applicant’s website “About Me” page indicates that applicant’s business began in Washington, D.C., the capital city of America, and “is one of the nation’s largest retailers of genuine designer fragrances and related accessories,” offering “over 100 stores to choose from throughout the country,” as well as Guam, which is an American federal territory. See attached. The application indicates that applicant’s business is incorporated in Florida, an American state. Thus, the wording “AMERICAN” merely describes the nature of applicant’s goods because applicant’s business is a national business with stores across America.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “AMERICAN” 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.
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
Alexandra Foster
/Alexandra Foster/
Trademark Examining Attorney
Law Office 117
(571) 272-5111
alexandra.foster1@uspto.gov
RESPONSE GUIDANCE