United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88563349
Mark: C7
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Correspondence Address: |
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Applicant: CHEN, YUNG-LIANG
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Reference/Docket No. HS0241-0033
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: November 05, 2019
INTRODUCTION
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).
However, applicant must address the following.
· Requirement for a Disclaimer
· Requirement for an Amended Description of the Mark
· Requirement for a Transliteration Statement
· Requirement for a U.S.-Licensed Attorney
· Requirement for a Foreign Certificate of Registration - 44(d) Basis with Intent to Perfect 44(e) Basis
REQUIREMENT FOR A DISCLAIMER
In this case, applicant must disclaim the pictorial representation of Taiwan because it is not inherently distinctive. This unregistrable design at best is primarily geographically descriptive of the origin of applicant’s services. See 15 U.S.C. §§1052(e)(2); In re Societe Generale des Eaux Minerales de Vittel S.A., 824 F.2d 957, 959, 3 USPQ2d 1450, 1451-52 (Fed. Cir. 1987); In re Joint-Stock Co. “Baik”, 80 USPQ2d 1305, 1309 (TTAB 2006); TMEP §§1210.01(a), 1213, 1213.03(a), (c).
An accurate design of geographically descriptive matter and the word or words which describe the design are legal equivalents; therefore, a design must be disclaimed the same as the primarily geographically descriptive wording See In re Can. Dry Ginger Ale, Inc., 86 F.2d 830, 832, 32 USPQ 49, 50 (C.C.P.A. 1936); TMEP §1210.02(a).
The design of Taiwan is the legal equivalent of the geographic place or location named Taiwan. TMEP §1210.02(a). The attached dictionary evidence and the evidence from The Columbia Gazetteer of the World and Wikipedia show that Taiwan is a generally known geographic place or location. See TMEP §§1210.02 et seq. The services for which applicant seeks registration originate in this geographic place or location as shown by applicant’s address. See TMEP §1210.03. Because the services originate in this place or location, a public association of the services with the place is presumed. See In re Hollywood Lawyers Online, 110 USPQ2d 1852, 1858 (TTAB 2014) (citing In re Spirits of New Merced, LLC, 85 USPQ2d 1614, 1621 (TTAB 2007)); TMEP §§1210.02(a) 1210.04.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use the pictorial representation of the island of Taiwan 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.
REQUIREMENT FOR AN AMENDED DESCRIPTION OF THE MARK
Applicant appears to have combined the transliteration statement in the same field as the mark description. Please note that the transliteration field is separate from the description of the mark field.
The following description of the mark is suggested, if accurate:
The mark consists of the letter “C” and the number “7” written vertically inside a stylized design of the island of Taiwan. Set to the right are two large stylized Chinese characters written vertically. The color white represents background and/or transparent areas and is not part of the mark.
REQUIREMENT FOR A TRANSLITERATION STATEMENT
Based on the attached translation evidence, it appears that the non-Latin characters in the mark are Chinese characters and the Chinese characters have an English translation. Accordingly, the following transliteration statement is suggested, if accurate:
The non-Latin characters in the mark transliterate to “XI QI” and this means “DOUBLE HAPPINESS SPIRIT” in English.
TMEP §809.03.
REQUIREMENT FOR A U.S.-LICENSED ATTORNEY
Applicant must be represented by a U.S.-licensed attorney. An applicant whose domicile is located outside of the United States or its territories is foreign-domiciled and must be represented at the USPTO by an attorney who is an active member in good standing of the bar of the highest court of a U.S. state or territory. 37 C.F.R. §§2.11(a), 11.14; Requirement of U.S.-Licensed Attorney for Foreign-Domiciled Trademark Applicants & Registrants, Examination Guide 4-19, at I.A. (Rev. Sept. 2019) An individual applicant’s domicile is the place a person resides and intends to be the person’s principal home. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. A juristic entity’s domicile is the principal place of business; i.e., headquarters, where a juristic entity applicant’s senior executives or officers ordinarily direct and control the entity’s activities. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. Because applicant is foreign-domiciled, applicant must appoint such a U.S.-licensed attorney qualified to practice under 37 C.F.R. §11.14 as its representative before the application may proceed to registration. 37 C.F.R. §2.11(a). See Hiring a U.S.-licensed trademark attorney for more information.
To appoint a U.S.-licensed attorney. To appoint an attorney, applicant should submit a completed Trademark Electronic Application System (TEAS) Revocation, Appointment, and/or Change of Address of Attorney/Domestic Representative form. The newly-appointed attorney must submit a TEAS Response to Examining Attorney Office Action form indicating that an appointment of attorney has been made and address all other refusals or requirements in this action, if any. Alternatively, if applicant retains an attorney before filing the response, the attorney can respond to this Office action by using the appropriate TEAS response form and provide his or her attorney information in the form and sign it as applicant’s attorney. See 37 C.F.R. §2.17(b)(1)(ii).
REQUIREMENT FOR A FOREIGN CERTIFICATE OF REGISTRATION - 44(d) BASIS WITH INTENT TO PERFECT 44(e) BASIS
An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016. In addition, the applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law. 15 U.S.C. §1126(b); TMEP §§1002.01, 1004.
Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available. TMEP §1003.04(a). A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin. TMEP §1004.01. If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, the applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin. TMEP §1016. In addition, applicant must also provide an English translation if the foreign registration is not written in English. 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b). The translation should be signed by the translator. TMEP §1004.01(b).
If the foreign registration is not yet available, applicant should inform the trademark examining attorney that the foreign application is still pending and request that the U.S. application be suspended until a copy of the foreign registration is available. TMEP §§716.02(b), 1003.04(a).
If applicant cannot satisfy the requirements of the Section 44(e) basis, applicant may amend the basis to Section 1(a) or 1(b), if applicant can satisfy the requirements for the new basis. See 15 U.S.C. §§1051(a)-(b), 1126(e); TMEP §806.03. Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration. See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.03(h).
RESPONSE GUIDELINES
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
ASSISTANCE
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
/Julie H. Choe/
Trademark Examining Attorney
United States Patent and Trademark Office
Law Office 126
(571) 270-3368
julie.choe@uspto.gov
RESPONSE GUIDANCE