To: | Gerald International Limited (efiling@knobbe.com) |
Subject: | U.S. Trademark Application Serial No. 88580753 - MARAMPA BLUE - FFWAT65.004T |
Sent: | November 16, 2019 06:22:39 PM |
Sent As: | ecom112@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. 88580753
Mark: MARAMPA BLUE
|
|
Correspondence Address: KNOBBE, MARTENS, OLSON & BEAR, LLP
|
|
Applicant: Gerald International Limited
|
|
Reference/Docket No. FFWAT65.004T
Correspondence Email Address: |
|
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 16, 2019
The assigned trademark examining attorney has reviewed the referenced application and has determined the following. Questions regarding the Office Action should be directed to the trademark examining attorney at kyle.peete@uspto.gov.
Search Results
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).
Summary of Issues
Request for Information
To permit proper examination of the application, applicant must provide the following information:
(1) Explain whether the wording in the mark “MARAMPA” and/or “BLUE” has any meaning or significance in the industry in which the goods and/or services are manufactured/provided, any meaning or significance as applied to applicant’s goods and/or services, or if such wording is a term of art within applicant’s industry.
(2) Explain whether this wording identifies a geographic place or has any meaning in a foreign language. Attached is evidence that MARAMPA is a known geographic location. Applicant should specify whether the goods/service originate from this location.
(3) Respond to the following questions:
- Explain whether the color blue is a feature of the goods/services or whether any of the goods are blue.
See 37 C.F.R. §§2.32(a)(9)-(a)(10), 2.61(b); TMEP §§809-809.03, 814.
Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.
Identification of Goods and Services
The underlined wording in the identification of goods and services shown below is unacceptable and must be clarified because it is too broad. Suggested amendments with explanation are shown in bold italics. See TMEP §1402.01.
The Office requires a degree of particularity necessary to clearly identify the goods and/or services covered by a mark. See In re Omega SA, 494 F.3d 1362, 1365, 83 USPQ2d 1541, 1543-44 (Fed. Cir. 2007). Descriptions of goods and services in applications must be specific, explicit, clear and concise. TMEP §1402.01; see Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954); In re Cardinal Labs., Inc., 149 USPQ 709, 711 (TTAB 1966).
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
Applicant may adopt the following identification, if accurate:
International Class 001: Alumina
International Class 006: Common metals and their alloys; metal ores; unprocessed and semi-processed materials of metal, in the nature of {specify materials and remove the wording “not specified for use”}; common metals, unwrought and semi-worked, for further manufacture; ferrous
metals; non-ferrous metals; unwrought or semi-wrought copper, aluminum and alumina {misclassified, see International Class 001}, tin,
iron, steel, cobalt ores {specify ores to differentiate from International Class 001 cobalt};
non-electric cables and wires of common metal; welding and soldering materials, namely, metal welding rods and welding wire; metal containers for storage or transport; iron ores
International Class 036: Financial services, namely, financial consultancy; commodity trading services for others; brokerage of hard commodities, namely, metals, precious metals, and associated raw materials; trading of financial derivatives; financial risk management; investment risk assessment services; hedge fund management and investment services; valuation of precious metals; safe deposit services for precious metals; information, advisory and consultancy services relating to the aforesaid services
International Class 037: Extraction of natural resources, namely, mining, drilling, excavating, and quarrying services; mining of metal, precious metals and associated raw materials; information, advisory and consultancy services relating to the aforesaid services
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in at least 4 classes; however, applicant submitted a fee(s) sufficient for only 3 classes. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See an overview of the requirements for a Sections 1(b) and 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
Foreign Registration
A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in the applicant’s country of origin. TMEP §1004.01. If an 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 the applicant’s country of origin. TMEP §1016.
Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin. If the foreign registration is not written in English, applicant must also provide an English translation. 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).
Alternatively, as applicant has not yet submitted the foreign registration or otherwise perfected the Section 44(e) basis, applicant can amend the application to rely solely on the Section 1 basis and request deletion of the Section 44(e) basis.
Unless applicant indicates otherwise, the USPTO will presume that applicant is relying on both Sections 1(b) and 44(e). Thus, although the mark may be approved for publication, it will not register until an acceptable allegation of use has been filed for the goods and/or services based on Section 1(b).
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
/Kyle Christopher Peete/
Kyle Christopher Peete
Trademark Attorney [Law Office 112]
(571) 272-8275 (Phone)
(571) 273-8275 (Fax)
kyle.peete@uspto
RESPONSE GUIDANCE