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:  October 30, 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.

 

SUMMARY OF ISSUES

 

• Prior Pending Applications may be Bar to Registration (Serial Nos. 88406715, 88011222, 87305582, 87305551, 87315890, 87475994, and 87325056)
• Refusal – Flag Simulation
• Identification and Classification of Goods Requirement

 

PRIOR PENDING APPLICATION MAY BE BAR TO REGISTRATION

 

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, a mark in a prior-filed pending application may present a bar to registration of applicant’s mark.

 

The filing date of pending U.S. Application Serial No. 88406715, 88011222, 87305582, 87305551, 87315890, 87475994, and 87325056 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.

 

SECTION 2(b)  REFUSAL – SIMULATION OF FLAG REFUSAL

 

Registration is refused because the applied-for mark includes a simulation of a United States Flag.  Trademark Act Section 2(b), 15 U.S.C. §1052(b); see TMEP §1204.  Trademark Act Section 2(b) bars registration of marks that include simulations of the flag, coat of arms, or other insignia of the United States, any state or municipality of the United States, or any foreign nation.  TMEP §§1204, 1204.01(a).

 

A simulation refers to “something that gives the appearance or effect or has the characteristics of an original item.”  In re Family Emergency Room LLC, 121 USPQ2d 1886, 1887 (TTAB 2017) (quoting In re Advance Indus. Sec., Inc., 194 USPQ 344, 346 (TTAB 1977)); TMEP §1204.  Whether the relevant matter in the mark is a simulation is determined by a visual comparison of the mark and the actual flag, coat of arms, or other insignia in question.  See In re Family Emergency Room LLC, 121 USPQ2d at 1887 (citing In re Advance Indus. Sec., Inc., 194 USPQ at 346); TMEP §1204. 

 

When comparing the mark and the actual flag, coat of arms, or other insignia, the focus is on the relevant purchasers’ general recollection of the flag, coat of arms, or other insignia, “without a careful analysis and side-by-side comparison.”  In re Family Emergency Room LLC, 121 USPQ2d at 1888 (quoting In re Advance Indus. Sec., Inc., 194 USPQ at 346).  The public should be considered to retain only a general or overall, rather than specific, recollection of the various elements or characteristics of design marks.  See In re Advance Indus. Sec., Inc., 194 USPQ at 346. 

 

The following factors are considered when determining whether a design in a mark would be perceived as a flag, coat of arms, or other insignia of the United States, any state or municipality of the United States, or any foreign nation: 

 

(1)               The colors, if any, that appear in the design;

 

(2)               The presentation of the mark, such as any stylization of the design and its relationship to other elements in the mark;

 

(3)               The presence of any words or other designs on the drawing; and

 

(4)        The use of the mark on the specimen(s), if one is provided, or in the record. 

 

TMEP §1204.01(a) (citing In re Family Emergency Room LLC, 121 USPQ2d at 1888). 

 

The attached evidence from an online encyclopedia shows an actual flag from the United States of America.  The applied-for mark includes the following matter:  a simulation of the Flag of the United States of America. 

 

The public would perceive the design in the mark as the flag of United States because the colors, presentation, and use of the mark on the specimen with the wording “AMERICA” create a direct association with the United States.

 

Trademark Act Section 2(b) is an absolute bar to registration on the Principal and Supplemental Registers.  Trademark Act Sections 2(b) and 23(a), (c), 15 U.S.C. §§1052(b), 1091(a), (c); see TMEP §§1204, 1204.04(a).

 

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

 

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

 

INFORMALITIES

 

IDENTIFICATION AND CLASSIFICATION OF GOODS REQUIREMENT

 

The wording in the identification of goods is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend this wording to specify the common commercial or generic name of the goods.  See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.

 

The wording in the identification is indefinite for the following reasons:

 

“Ball-caps with the slogan- Keeping America Great centered with the Betsy Ross Flag on the left and 1776 underneath, on the right US Flag and 2020 underneath,” is indefinite as Applicant must use the common commercial designation to identify the goods.  The extra language concerning the mark is unnecessary and does not relate to identification of the goods.

 

Applicant may substitute the following wording, if accurate (changes in bold):

 

Class 025:  baseball hats

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e).

 

For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

PRO SE RESPONSE GUIDELINES

 

Response guidelines.  For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

TELEPHONE OR EMAIL FOR CLARIFICATION

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

APPLICANT MAY WISH TO SEEK TRADEMARK COUNSEL

 

Because of the legal technicalities and strict deadlines of the trademark application process, applicant may wish to hire a private attorney who specializes in trademark matters to assist in the process.  The assigned trademark examining attorney can provide only limited assistance explaining the content of an Office action and the application process.  USPTO staff cannot provide legal advice or statements about an applicant’s legal rights.  TMEP §§705.02, 709.06.  See Hiring a U.S.-licensed trademark attorney for more information.

 

 

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  

 

 

/Kapil K. Bhanot/

Examining Attorney

Law Office 108

571.270.1516

Kapil.Bhanot@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 October 30, 2019 for

U.S. Trademark Application Serial No. 88649756

 

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. 

 

 

/Kapil K. Bhanot/

Examining Attorney

Law Office 108

571.270.1516

Kapil.Bhanot@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 October 30, 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.”