To: | MECS, INC. (DUPONT.TRADEMARKS@DUPONT.COM) |
Subject: | U.S. Trademark Application Serial No. 88595636 - SUPER GEAR - N/A |
Sent: | January 02, 2020 06:40:06 PM |
Sent As: | ecom121@uspto.gov |
Attachments: | Attachment - 1 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88595636
Mark: SUPER GEAR
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Correspondence Address:
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Applicant: MECS, INC.
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Reference/Docket No. N/A
Correspondence Email Address: |
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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: January 02, 2020
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
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).
SUMMARY OF ISSUES
DISCLAIMER REQUIREMENT
In this case, applicant must disclaim the wording “SUPER” because it is not inherently distinctive. This unregistrable term at best are merely laudatory and descriptive of the alleged merit of applicant’s goods. See 15 U.S.C. §§1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1256, 103 USPQ2d 1753, 1759 (Fed. Cir. 2012); TMEP §1209.03(k).
“Self-laudatory or puffing marks are regarded as a condensed form of describing the character or quality of the goods [or services].” DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d at 1256, 103 USPQ2d at 1759 (quoting In re The Boston Beer Co., 198 F.3d 1370, 1373, 53 USPQ2d 1056, 1058 (Fed. Cir. 1999)). Thus, wording such as “ultimate,” “best,” “greatest,” and the like are generally considered laudatory and descriptive of an alleged superior quality of the goods and/or services. See In re Nett Designs, Inc., 236 F.3d 1339, 1342, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001); In re The Boston Beer Co., 198 F.3d at 1373-74, 53 USPQ2d at 1058-59; TMEP §1209.03(k).
The attached evidence from the online American Heritage Dictionary shows that the wording “SUPER” is used to refer to something that is “superior, as in size, quality, degree, or ability” or something that is “excellent; first-rate.” See attached. Therefore, this wording is merely laudatory of the supposed superior quality of the goods.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “SUPER” 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 MUST BE SIGNED BY SOMEONE WITH LEGAL AUTHORITY TO BIND JURISTIC ENTITY
In a previous Examiner’s Amendment issued on December 11, 2019, a legal representative authorized the disclaimer of the laudatory wording noted above. However, upon further review of the application, it appears that applicant is a juristic entity with no attorney of record. Thus, authorization to make changes to the record must be authorized by a corporate officer. TMEP § 611.06(d). The examining attorney apologizes for this oversight.
Responses to Office actions must be properly signed. See 37 C.F.R. §§2.62(b), 2.193(e)(2); TMEP §§712, 712.01. If an applicant is not represented by a U.S.-licensed attorney, the response must be signed by the individual applicant or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner). See 37 C.F.R. §2.193(e)(2)(ii); TMEP §§611.03(b), 611.06(b)-(h), 712.01. In the case of joint applicants, all must sign. 37 C.F.R. §2.193(e)(2)(ii); TMEP §611.06(a).
An officer is a person who holds an office established in the articles of incorporation or corporate bylaws, such as a President, Vice-President, Secretary, Treasurer, Chief Executive Officer, Chief Operating Officer, and Chief Financial Officer. Some titles are generally not accepted because they usually do not identify officers. For instance, a General Manager, or any other type of manager, is usually merely an employee, not an officer. See TMEP § 611.06(d).
A corporation cannot delegate authority to sign to someone who is not a corporate officer. In re Textron, Inc., 183 USPQ 301 (Comm'r Pats. 1974). Therefore, documents purporting to authorize representation, even if signed by officers, will not be accepted as establishing authority of a person who does not have authority to legally bind the corporation under its bylaws or articles of incorporation.
If an applicant is represented by a U.S.-licensed attorney authorized to practice before the USPTO, the attorney must sign the response. 37 C.F.R. §2.193(e)(2)(i); TMEP §§611.03(b), 712.01. The only attorneys who may sign responses are (1) attorneys in good standing with a bar of the highest court of any U.S. state or territory, or (2) Canadian trademark attorneys or agents reciprocally recognized by the USPTO’s Office of Enrollment and Discipline (OED) who are appointed in connection with a U.S.-licensed attorney. See 37 C.F.R. §§2.17(a), 11.14(a), (c), (e). Foreign attorneys, other than recognized Canadian trademark attorneys or agents, do not have authority to sign responses. See 37 C.F.R. §§2.17(e), 11.14(c)(1), (e).
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.
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.
/Matthew D. McClellan/
Trademark Examining Attorney, Law Office 121
Phone: (571) 272-5148
RESPONSE GUIDANCE