To: | OV Cigars, LLC (azhar@mamdanilaw.com) |
Subject: | U.S. Trademark Application Serial No. 88637532 - 2012 BY OSCAR VALLADARES - N/A |
Sent: | January 10, 2020 01:02:03 PM |
Sent As: | ecom106@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. 88637532
Mark: 2012 BY OSCAR VALLADARES
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Correspondence Address:
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Applicant: OV Cigars, LLC
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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 10, 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.
Results of Trademark Act Section 2(d) Search
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 that Applicant Must Address
1. Trademark Act Section 2(c) Refusal - Consent to Register Not of Record
2. Disclaimer Requirement
Trademark Act Section 2(c) Refusal – Consent to Register Not of Record
Registration is refused because the applied-for mark includes a name identifying a particular living individual whose written consent to register the mark is not of record. Trademark Act Section 2(c), 15 U.S.C. §1052(c); TMEP §1206; see In re Nieves & Nieves LLC, 113 USPQ2d 1639, 1649-50 (TTAB 2015); In re Hoefflin, 97 USPQ2d 1174, 1175-76 (TTAB 2010).
The evidence from http://oscartobacco.com/ at Attachment 1 indicates that Oscar Valladares is the name of a particular individual who founded and operates a cigar manufacturing company. The identified goods consist of “cigars” and the applied-for mark includes the name Oscar Valladares. Thus, this evidence shows that a person is publicly connected with the type of goods with which the mark is being used.
The refusal under Section 2(c) will be withdrawn if applicant provides both of the following:
(1) A statement that the name shown in the mark identifies Oscar Valladares, a living individual whose consent is of record. If the name represents that of a pseudonym, stage name, title and name combination, or nickname, applicant must include a statement that {specify fictitious or assumed name} identifies the {specify one: pseudonym/stage name/title and name/nickname} of {specify actual name}, a living individual whose consent is of record.
(2) A written consent, personally signed by the individual whose name appears in the mark, authorizing applicant to register the identifying matter as a trademark with the USPTO; for example, an applicant may use, if applicable, the following: “I, Oscar Valladares, consent to the use and registration of my name as a trademark with the USPTO.”
See TMEP §§813, 813.01(a), 1206.04(a).
Applicant is advised that the written consent must include a statement of the party’s consent to applicant’s registration, and not just the use, of the identifying matter as a trademark. See Krause v. Krause Publ’ns, Inc., 76 USPQ2d 1904, 1912-13 (TTAB 2005); In re New John Nissen Mannequins, 227 USPQ 569, 571 (TTAB 1985); TMEP §1206.04(a).
Disclaimer Requirement
Applicant must provide a disclaimer of the unregistrable part 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 “2012” because it is not inherently distinctive. This unregistrable term is merely descriptive of a characteristic of applicant’s goods. 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).
Attachment 1 consists of screen shots from http://oscartobacco.com/, which shows that applicant’s business was established in 2012. Attachment 2 comprises screen shots from the website of Famous Smoke Shop, which indicates that cigars sold under the applied-for mark “are a box-pressed reboot of the original 2012 edition, released the year when Oscar Valladares officially entered the cigar business.” Thus, the term “2012” in the applied-for mark immediately describes the year applicant’s business was established and the particular edition of the cigars.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “2012” 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.
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.
If applicant has any questions about this Office action, please contact the undersigned examining attorney.
/Linda Lavache/
Trademark Examining Attorney
Law Office 106
p. 571.272.7187
linda.lavache@uspto.gov
RESPONSE GUIDANCE