Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NONFINAL OFFICE ACTION

 

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 22, 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.

 

SUMMARY OF ISSUES

 

Registration is refused on the following grounds:

 

• A duplicate registration exists
• A disclaimer requirement

 

SEARCH OF U.S.P.T.O. 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).

 

• A duplicate registration exists

 

The USPTO will not issue two or more identical registrations on the same register.  If two applications on the same register would result in registrations that are exact duplicates, the USPTO will permit only one application to mature into registration, and will refuse registration in the other application.  37 C.F.R. §2.48. 

 

Applicant owns Reg No. 3654004 for GOYA LATIN CAFÉ for use in connection with “Carry-out restaurants; Fast-food restaurants; Fast-food restaurants and snackbars; Food preparation services; Restaurant services; Snack bars,” in Class 43.  This application is also for GOYA LATIN CAFÉ for use in connection with “carry-out restaurants; fast-food restaurants; fast-food restaurants and snack bars; food preparation services; restaurant services; snack bars.”  This would result in duplicate registrations.  The prior registration is still alive.  The latest date that the renewal documents can be filed for the registration is January 14, 2020.

 

Accordingly, registration is refused because this application appears to be an exact duplicate of U.S. Registration No. 3654004.  37 C.F.R. §2.48; TMEP §703.  See the attached registration.  The USPTO will not issue duplicate registrations.  37 C.F.R. §2.48; TMEP §703. 

 

Applicant may respond to this refusal by abandoning the application or surrendering the registration.  To expressly abandon the application, an applicant should use the TEAS Request for Express Abandonment (Withdrawal) of Application form; to surrender the registration, the TEAS Surrender of registration for cancellation form should be used.

 

• A disclaimer requirement

 

If applicant surrenders the registration and proceeds with this application, a disclaimer of LATIN CAFÉ is required.

 

Applicant must provide a disclaimer of the unregistrable part(s) of the applied-for mark even though the mark as a whole appears to be registrable on the Supplemental Register.  See 15 U.S.C. §1056(a), 1091(c); In re Water Gremlin Co., 635 F.2d 841, 845 n.6, 208 USPQ 89, 91 n.6 (C.C.P.A. 1980); TMEP §§1213, 1213.03(a).  A disclaimer of an unregistrable part of a mark will not affect the mark’s appearance.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).

 

In this case, applicant must disclaim the wording “LATIN CAFÉ” because it is not inherently distinctive.  These unregistrable term(s) are generic for applicant’s goods and/or services.  See 15 U.S.C. §1091(c); In re Water Gremlin Co., 635 F.2d 841, 845 n.6, 208 USPQ 89, 91 n.6 (C.C.P.A. 1980); TMEP §1213.03(b). 

 

“A mark is generic if its primary significance to the relevant public is the class or category of goods or services on or in connection with which it is used.”  TMEP §1209.01(c)(i) (citing H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 989-90, 228 USPQ 528, 530 (Fed. Cir. 1986); In re ActiveVideo Networks, Inc., 111 USPQ2d 1581, 1600 (TTAB 2014)).  Determining whether a mark is generic requires a two-step inquiry:

 

(1)       What is the genus of goods and/or services at issue?

 

(2)       Does the relevant public understand the designation primarily to refer to that genus of goods and/or services?

 

H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d at 989-90, 228 USPQ at 530; In re Meridian Rack & Pinion, 114 USPQ2d 1462, 1463 (TTAB 2015) (citing In re 1800Mattress.com IP, LLC, 586 F.3d 1359, 1363, 92 USPQ2d 1682, 1684 (Fed. Cir. 2009)); TMEP §1209.01(c)(i). 

 

Regarding the first part of the inquiry, the genus of services is often defined by an applicant’s identification of services.  See In re Meridian Rack & Pinion, 114 USPQ2d at 1463 (citing Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 640, 19 USPQ2d 1551, 1552 (Fed. Cir. 1991)). 

 

In this case, the application identifies the services as “carry-out restaurants; fast-food restaurants; fast-food restaurants and snack bars; food preparation services; restaurant services; snack bars,” and a CAFE adequately defines the genus at issue.

 

Regarding the second part of the inquiry, the relevant public is the purchasing or consuming public for the identified goods and/or services.  Sheetz of Del., Inc. v. Doctor’s Assocs. Inc., 108 USPQ2d 1341, 1351 (TTAB 2013) (citing Magic Wand Inc. v. RDB Inc., 940 F.2d at 640, 19 USPQ2d at 1553).  In this case, the relevant public would understand this designation to refer primarily to the genus of services because a café is synonymous of restaurant.

 

Applicant may respond to this issue by submitting a disclaimer in the following format:

 

No claim is made to the exclusive right to use “LATIN CAFE” 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.

 

 

RESPONSE GUIDELINES

 

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.    

 

 

/Giselle Agosto-Hincapie/

Examining Attorney Advisor

Trademarks Law Office 102

giselle.agosto@uspto.gov (Informal inquires only)

571-272-5868

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on November 22, 2019 for

U.S. Trademark Application Serial No. 88589367

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Giselle Agosto-Hincapie/

Examining Attorney Advisor

Trademarks Law Office 102

giselle.agosto@uspto.gov (Informal inquires only)

571-272-5868

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from November 22, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”