To: | Velotec Sports LLC (officeactions@br-tmlaw.com) |
Subject: | U.S. Trademark Application Serial No. 88646902 - PROTEGER - N/A |
Sent: | January 14, 2020 11:56:58 AM |
Sent As: | ecom113@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88646902
Mark: PROTEGER
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Correspondence Address: |
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Applicant: Velotec Sports 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 14, 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.
1. Section 2(e)(1) – Mere Descriptiveness Refusal
2. Advisory: Supplemental Register Not Permitted Until Acceptable Amendment To Allege Use Filed
3. Information About The Applied-For Goods Required
4. Amended Translation Statement Required
SEARCH OF OFFICE RECORDS- NO CONFLICTING 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).
However, applicant must respond to the following refusal and requirements.
SECTION 2(e)(1) – MERE DESCRIPTIVENESS REFUSAL
In this case, applicant has applied for the mark “PROTEGER” for use in connection with “bicycle helmets.”
Here, “PROTEGER” means “to protect” or “protection” in French, which is a common, modern language in the United States. See http://dictionary.cambridge.org/dictionary/french-english/proteger and http://www.collinsdictionary.com/dictionary/french-english/prot%C3%A9ger; 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. Therefore, consumers will immediately understand the mark as conveying the purpose and feature of the applied-for bicycle helmets is to provide protection.
The following attached evidence demonstrates the term “protect” is commonly used in connection with similar goods to describe the purpose of the goods is to keep the user safe from harm or injury. See e.g.,
Skull fractures and brain bruising result from direct impact and linear energy — the sort you would experience if you fell and hit your head on a curb. Bike helmets protect from these injuries quite well.”).
The attached evidence of third-party usage of the term “protect” to convey the purpose of bicycle helmets demonstrates that purchasers will immediately understand the applied-for-mark, “PROTEGER”, meaning “protect”, as conveying a salient feature, use, and purpose of applicant’s goods is to protect users against harm or injury.
Ultimately, when purchasers encounter applicant’s goods using the mark “PROTEGER”, they will immediately understand the mark as an indication of the feature, use, and purpose 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
ADVISORY: SUPPLEMENTAL REGISTER NOT PERMITTED UNTIL ACCEPTABLE AMENDMENT TO ALLEGE USE FILED
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.
REQUIREMENTS
If applicant responds to the refusal, applicant must also respond to the requirements set forth below.
INFORMATION ABOUT THE APPLIED-FOR 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:
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).
AMENDED TRANSLATION STATEMENT REQUIRED
Although applicant has submitted a translation statement for the mark, it does not appear to be the best translation. 37 C.F.R. §§2.32(a)(9), 2.61(b); see TMEP §809. The following English translation is suggested: The English translation of “PROTEGER” in the mark is “protect”. TMEP §809.03. See Cambridge French to English Dictionary and Collins French to English Dictionary, supra. Alternatively, if applicant contends “guard” is appropriate, applicant should attach evidence supporting this translation.
RESPONSE GUIDANCE
How to respond. Click to file a response to this nonfinal Office action.
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