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:  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).

 

For purposes of Section 2(c), a name in a mark identifies a particular living individual if the person bearing the name will be associated with the mark as used on the goods because:  “(1) the person is so well known that the public would reasonably assume a connection between the person and the goods; or (2) the individual is publicly connected with the business in which the mark is used.”  In re Nieves & Nieves LLC, 113 USPQ2d 1639, 1650 (TTAB 2015); see In re Hoefflin, 97 USPQ2d 1174, 1175-76 (TTAB 2010); Krause v. Krause Publ’ns, Inc., 76 USPQ2d 1904, 1909-10 (TTAB 2005).

 

A determination that a person is publicly connected with the business in which the mark is being used may be based on evidence that the named individual is well known in the relevant field of goods, is associated in some manner with the applicant (e.g., the named individual is a corporate officer or partner of the applicant), and/or is actually connected to the goods at issue (e.g., the named individual invented the identified goods in the application), and, as a result, the relevant public will recognize or perceive the name as identifying that particular individual.  See Krause v. Krause Publ’ns Inc., 76 USPQ2d 1904, 1909-10 (TTAB 2005); In re Sauer, 27 USPQ2d 1073, 1075 (TTAB 1993); TMEP §1206.02. 

 

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.

 

If applicant does not provide the required disclaimer, the USPTO may refuse to register the entire mark.  See In re Stereotaxis Inc., 429 F.3d 1039, 1041, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005); TMEP §1213.01(b).

 

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

• 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 January 10, 2020 for

U.S. Trademark Application Serial No. 88637532

 

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. 

 

 

/Linda Lavache/

Trademark Examining Attorney

Law Office 106

p. 571.272.7187

linda.lavache@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 January 10, 2020, 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.”