To: | Gerald International Limited (efiling@knobbe.com) |
Subject: | U.S. Trademark Application Serial No. 88580803 - SL MINING - FFWAT65.005T |
Sent: | November 16, 2019 06:22:04 PM |
Sent As: | ecom112@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88580803
Mark: SL MINING
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Correspondence Address: KNOBBE, MARTENS, OLSON & BEAR, LLP
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Applicant: Gerald International Limited
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Reference/Docket No. FFWAT65.005T
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 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:
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
The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application. See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4). However, no copy of a foreign registration has been provided even though the application indicates applicant’s intent to rely on Section 44(e) as an additional basis for registration. See 15 U.S.C. §1126(e).
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, an 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, 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 has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available. TMEP §§716.02(b), 1003.04(b).
If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely on the Section 1(b) basis. See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b). Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed. See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103. 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), 806.04(b).
Alternatively, applicant has the option to amend the application to rely solely on the Section 44(e) basis and request deletion of the Section 1(b) basis. See 37 C.F.R. §2.35(b)(1); TMEP §806.04. The foreign registration alone may serve as the basis for obtaining a U.S. registration. See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).
Disclaimer
In this case, applicant must disclaim the design of the map of Africa together with the wording “MINING” because they are not inherently distinctive. These unregistrable part(s) are at best merely descriptive and primarily geographically descriptive of applicant’s goods and/or 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), 1210.06(a), 1213.03(a). A design of geographically descriptive matter, and the word or words that 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 the map of Africa is the legal equivalent of the geographic place or location named Africa. The attached evidence shows that Africa is a generally known geographic place or location. See TMEP §§1210.02 et seq. The goods and/or services for which applicant seeks registration possibly originate in this geographic place or location as shown by the attached evidence showing applicant does business in Africa. See TMEP §1210.03. Because the goods and/or services originate in this place or location, a public association of the goods and/or 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.
The term MINING is the generic name for applicant’s International Class 037 mining services and describes the International Class 006 and 036 goods and services emanating from and part of the mining.
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 design of the map of Africa and “MINING” 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.
Mark Description
The following description is suggested, if accurate: The mark consists of the wording SL MINING next to a design of the map of Africa shown with lines.
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