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 13, 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.

 

SUMMARY OF ISSUES:

 

1. Advisory:  Potential Section 2(d) Refusal – One Prior Pending Application
2. Section 2(e)(1) – Mere Descriptiveness Refusal
3. Advisory: Supplemental Register Not Permitted Until Acceptable Amendment To Allege Use Filed
4. Information About Goods Required

 

The trademark examining attorney has searched the USPTO’s database of registered and pending marks and has found no similar registered marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).  However, marks in prior-filed pending applications may present a bar to registration of applicant’s mark as provided below. Please note that no response is required to the potential Section 2(d) – Likelihood of Confusion Refusal at this time.

 

ADVISORY:  POTENTIAL SECTION 2(d) REFUSAL – ONE PRIOR PENDING APPLICATION

 

The filing date of pending U.S. Application Serial No. 88111149 precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

While applicant is not required to respond to the issue of the pending application, applicant must respond to this Office Action within six months of the mailing date to avoid abandonment.

However, applicant must respond to the following refusal and requirement.

SECTION 2(e)(1) – MERE DESCRIPTIVENESS REFUSAL

 

Registration is refused because the applied-for mark merely describes a feature of applicant’s goods.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

 

In this case, applicant has applied for the mark “LUMIERE” for use in connection with bicycle helmets.

 

A mark is merely descriptive if it describes a feature of an applicant’s goods.  TMEP §1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)). 

 

Additionally, the foreign equivalent of a merely descriptive English term is also merely descriptive.  In re N. Paper Mills, 64 F.2d 998, 998, 17 USPQ 492, 493 (C.C.P.A. 1933); In re Highlights for Children, Inc., 118 USPQ2d 1268, 1270 (TTAB 2016) (quoting In re Optica Int’l, 196 USPQ 775, 777 (TTAB 1977)).  Under the doctrine of foreign equivalents, marks with foreign terms from common, modern languages are translated into English to determine descriptiveness.  Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1377, 73 USPQ2d 1689, 1696 (Fed. Cir. 2005) (citing In re Sarkli, Ltd., 721 F.2d 353, 354, 220 USPQ 111, 113 (Fed. Cir. 1983); In re Am. Safety Razor Co., 2 USPQ2d 1459, 1460 (TTAB 1987)); see TMEP §1209.03(g).

 

Here, applicant’s mark, “LUMIERE” means “light” in French, which is a common, modern language in the United States.  See In re Optica Int’l, 196 USPQ 775 (TTAB 1977).

 

The doctrine is applied when “the ordinary American purchaser” would “stop and translate” the foreign term into its English equivalent.  Palm Bay, 396 F.3d at 1377, 73 USPQ2d at 1696 (quoting In re Pan Tex Hotel Corp., 190 USPQ 109, 110 (TTAB 1976)); TMEP §1209.03(g).  The ordinary American purchaser includes those proficient in the foreign language.  In re Spirits Int’l, N.V., 563 F.3d 1347, 1352, 90 USPQ2d 1489, 1492 (Fed. Cir. 2009); see In re Highlights for Children, Inc., 118 USPQ2d at 1271. 

 

In this case, the ordinary American purchaser would likely stop and translate the mark because the French language is a common, modern language spoken by an appreciable number of consumers in the United States.  Thus, these consumers will understand the mark, “LUMIERE” as meaning light and as conveying the applied-for goods feature a lamp, or source of light.  See http://www.ahdictionary.com/word/search.html?q=light.

 

The following attached evidence demonstrates the term “light” is commonly used in connection with similar goods to describe bicycle helmets that feature a source of light.  See e.g.,

 

1.      http://www.qualitygrabber.com/products/smart-bike-helmet-with-led-light-5-colors?variant=30861054672969 (“Bike Safety Helmet with LED Light”).

 

2.      http://www.wish.com/product/5cb1979d8029606a85eda6c7?hide_login_modal=true&from_ad=goog_shopping&_display_country_code=US&_force_currency_code=USD&pid=googleadwords_int&c=%7BcampaignId%7D&ad_cid=5cb1979d8029606a85eda6c7&ad_cc=US&ad_curr=USD&ad_price=39.00&campaign_id=7203534630&gclid=EAIaIQobChMIhYDzifmB5wIVCYizCh1xfArpEAQYBCABEgIjQfD_BwE (“Xiaomi Smart4u SH50 Cycling Helmet Intelligent Back LED Light Waterproof Long Use Helmet Back Light for Bike Scooter Women Men”).

 

3.      http://www.youtube.com/watch?v=OM1yy0KRW3Q (“The Lumos bike helmet is a bike helmet that wants to save your life. Its 60 LEDs cover the front and back. In the rear, it has an automatic brake light that is controlled by an accelerometer. Left and right turn signals can be switched with buttons on the handlebars.”).

 

4.      http://www.walmart.com/ip/Zefal-Adjustable-Light-up-Bicycle-Helmet-L-58-61cm-Universal-Dial/149607505?wmlspartner=wlpa&selectedSellerId=0&wl13=4424&adid=22222222227131567681&wl0=&wl1=g&wl2=c&wl3=237891338538&wl4=aud-430887228898:pla-390625680649&wl5=9016920&wl6=&wl7=&wl8=&wl9=pla&wl10=8175035&wl11=local&wl12=149607505&veh=sem&gclid=EAIaIQobChMIjqjL8_2B5wIViJyzCh1ahgSuEAkYHSABEgLDavD_BwE (“The light-up helmet also offers an integrated visor and a soft comfortable padded helmet liner that is also removable for quick and easy cleaning. Additionally, the helmet has a built in rear LED light that helps the traffic behind you know that you are there. The rear LED light offer 3 modes to choose from (constant, flashing and chasing). Overall, the Zefal "light-up" helmet offers superb protection in a lightweight, attractive and yet, affordable design.”).

 

5.      http://www.amazon.com/VICTGOAL-Detachable-Adjustable-Lightweight-Teenagers/dp/B07BP3QNZS/ref=asc_df_B07BP3QNZS/?tag=hyprod-20&linkCode=df0&hvadid=242033862368&hvpos=1o40&hvnetw=g&hvrand=7133374734196431095&hvpone=&hvptwo=&hvqmt=&hvdev=c&hvdvcmdl=&hvlocint=&hvlocphy=9016920&hvtargid=pla-584824909159&psc=1 (“VICTGOAL Bike Helmet with Detachable Visor Back Light & Insect Net Padded Adjustable Sport Cycling Helmet Lightweight Bicycle Helmets for Adult Men and Women Youth Teenagers… BRIGHT TAILLIGHT, LED SAFETY LIGHT, 6 LED Bulb with 3 lighting modes - steady, slow flashing and fast flashing, it will help people behind you clearly recognized your direction, More safer when night cycling.”).

 

The attached evidence of third-party usage of the term “light” to describe bicycle helmets that contain a light source demonstrates that purchasers will immediately understand the applied-for-mark as conveying a salient feature of applicant’s goods is that it contains a light source.

 

Ultimately, when purchasers encounter applicant’s goods using the mark “LUMIERE”, they will immediately understand the mark as an indication of the feature of applicant’s goods rather than as an indication that applicant is the source of the goods.  Therefore, the mark is merely descriptive and registration is refused pursuant to Section 2(e)(1) of the Trademark Act. 

 

Response to Section 2(e)(1) – Mere Descriptiveness Refusal

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.

 

ADVISORY: SUPPLEMENTAL REGISTER NOT PERMITTED UNTIL ACCEPTABLE AMENDMENT TO ALLEGE USE FILED

 

Although an amendment to the Supplemental Register would normally be an appropriate response to this refusal, such a response is not appropriate in the present case.  The instant application was filed under Trademark Act Section 1(b) and is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use meeting the requirements of 37 C.F.R. §2.76 has been timely filed.  37 C.F.R. §2.47(d); TMEP §§816.02, 1102.03.

 

If applicant files an acceptable allegation of use and also amends to the Supplemental Register, the application effective filing date will be the date applicant met the minimum filing requirements under 37 C.F.R. §2.76(c) for an amendment to allege use.  TMEP §§816.02, 1102.03; see 37 C.F.R. §2.75(b).  In addition, the undersigned trademark examining attorney will conduct a new search of the USPTO records for conflicting marks based on the later application filing date.  TMEP §§206.01, 1102.03.

REQUIREMENT

If applicant responds to the refusal, applicant must also respond to the requirement set forth below.

 

INFORMATION ABOUT GOODS REQUIRED

 

To permit proper examination of the application, applicant must submit additional information about applicant’s goods.  See 37 C.F.R. §2.61(b); TMEP §§814, 1402.01(e).  Specifically, applicant must submit the following: 

 

•  Do the applied-for goods contain any “LIGHTS”?

 

Factual information about the goods must clearly indicate how they operate, their salient features, and their prospective customers and channels of trade.  Conclusory statements will not satisfy this requirement for information.

 

Failure to comply with a request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.  Merely stating that information about the goods is available on applicant’s website is an insufficient response and will not make the relevant information of record.  See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).

 

RESPONSE GUIDANCE

 

How to respond.  Click to file a response to this nonfinal Office action.   

 

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.  

 

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.

ASSISTANCE

Please call or email the assigned trademark examining attorney with questions about this Office action. If applicant requires technical assistance in using the online response form, applicant may email TEAS@uspto.gov or call the Trademark Assistance Center at 1-800-786-9199.

 

/Tiffany Y. Chiang/

Examining Attorney

Law Office 113

(571) 272-7681

tiffany.chiang@uspto.gov

 

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on January 13, 2020 for

U.S. Trademark Application Serial No. 88643553

 

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. 

 

 

/Tiffany Y. Chiang/

Examining Attorney

Law Office 113

(571) 272-7681

tiffany.chiang@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 13, 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.”