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:  December 19, 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.

 

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:

1.      Disclaimer.

2.      Name of a particular living individual.

 

 

INFORMALITIES

 

 

DISCLAIMER 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.  See 15 U.S.C. §1056(a); 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 “COFFEE COMPANY” because it is not inherently distinctive.  These unregistrable term(s) at best are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services.  See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a). 

 

The applicant’s mark THE CARLOS SANTANA COFFEE COMPANY is used for “Coffee; coffee beans; coffee-based beverages; coffee-based snack foods; gift packages sold as a unit consisting primarily of coffee.”

 

The attached evidence from The American Heritage Dictionary of the English Language shows COFFEE means “a.  Any of various tropical African shrubs or trees of the genus Coffea, especially C. arabica or C. canephora, widely cultivated in the tropics for their seeds that are dried, roasted, and ground to prepare a stimulating aromatic drink. b. The beanlike seeds of this plant, two of which are found in each fruit. c. The beverage prepared from the seeds of this plant: likes to drink coffee with breakfast. d. A serving of such a beverage: ordered two coffees with sugar.” and COMPANY means “A business enterprise; a firm.” Thus, the wording merely describes applicant’s goods and/or services because a feature of the applicant’s business which is in the business including coffee, coffee beans, and coffee-based beverages.

 

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

 

No claim is made to the exclusive right to use “COFFEE COMPANY” 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.

 

 

NAME OF A PARTICULAR LIVING INDIVIDUAL

 

The applied-for mark contains the name “CARLOS SANTANA” and appears to identify a particular living individual; however, the application does not include this named party’s written consent to registration of the name as a trademark/service mark.  Written consent is required for registration of a mark containing a name, including a pseudonym, stage name or nickname, or signature, if the name or signature identifies a particular living individual.  Trademark Act Section 2(c), 15 U.S.C. §1052(c); TMEP §§813, 1206.04(a).  Therefore, applicant must clarify whether this name/signature identifies a particular living individual and, if so, provide a written consent from this individual, as explained further below.  37 C.F.R. §2.61(b); TMEP §§813, 1206.04(a).   

 

If the name or signature in the mark does not identify a particular living individual, then applicant must submit a statement that the name “CARLOS SANTANA” does not identify a living individual.  TMEP §§813.01(b), 1206.05; see 37 C.F.R. §2.61(b).

 

If the name or signature in the mark does identify a particular living individual, then applicant must submit the following: 

 

(1)  A statement that the name “CARLOS SANTANA” identifies a living individual whose consent is of record.  If the name represents that of a pseudonym, stage name, or nickname, applicant must include a statement that the name “CARLOS SANTANA” identifies the <pseudonym/stage name/nickname> of <specify actual name>, a living individual whose consent is of record; and

 

(2)  A written consent, personally signed by the individual whose name or signature appears in the mark, authorizing applicant to register the name, pseudonym, stage name, nickname, or signature as a trademark and/or service mark with the USPTO (e.g., “I consent to the use and registration by Santana Tesoro, LLC of my name “CARLOS SANTANA” as a trademark and/or service mark with the USPTO”).

 

TMEP §§813, 813.01(a), 1206.04(a); see 37 C.F.R. §2.61(b).

 

Failure to respond to this inquiry is a sufficient basis for refusing registration.  See In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701 (TTAB 2003); TMEP §814.

 

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.    

 

 

/Warren L. Olandria/

Trademark Examining Attorney

U.S. Patent & Trademark Office

Law Office 112

Phone: 571-272-9718

Warren.Olandria@uspto.gov

 

 

 

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 December 19, 2019 for

U.S. Trademark Application Serial No. 88629430

 

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. 

 

 

/Warren L. Olandria/

Trademark Examining Attorney

U.S. Patent & Trademark Office

Law Office 112

Phone: 571-272-9718

Warren.Olandria@uspto.gov

 

 

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 December 19, 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.”