To: | Vans, Inc. (Kia_H_Wimmer@vfc.com) |
Subject: | U.S. Trademark Application Serial No. 88681604 - WAFFLE LOVERS CLUB - N/A |
Sent: | January 13, 2020 10:13:21 AM |
Sent As: | ecom123@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88681604
Mark: WAFFLE LOVERS CLUB
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Correspondence Address: |
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Applicant: Vans, Inc.
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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 13, 2020
The referenced application has been reviewed by the assigned Trademark Examining Attorney. Applicant must respond timely and completely to the issue below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SEARCH OF OFFICE’S DATABASE OF 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).
SUMMARY OF ISSUES TO WHICH APPLICANT MUST RESPOND:
DISCLAIMER REQUIRED
In this case, Applicant must disclaim the word “WAFFLE” because it is not inherently distinctive. This unregistrable term at best is merely descriptive of a feature 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).
The attached dictionary evidence from Lexico defines the word “WAFFLE” as “denoting a style of fine honeycomb weaving or a fabric woven to give a honeycomb effect”. See http://www.lexico.com/en/definition/waffle. The additional attached Internet evidence from Columbia, Pegasus Auto Racing Supplies, Dresshead, Parachute, Oriental Trading, The Monogrammed Home, and Bows & Cleats Boutique demonstrates that the term “WAFFLE” is commonly used by third parties to advertise or describe clothing and bags with a honeycomb pattern or effect. Thus, the evidence clearly establishes that the word “WAFFLE” immediately and directly conveys that Applicant’s goods have a waffle or honeycomb pattern, which is a key feature of the goods. Therefore, this word must be disclaimed.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “WAFFLE” 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.
HOW TO RESPOND
For this application to proceed, Applicant must explicitly address each requirement in this Office action. 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.
Click to file a response to this nonfinal Office action.
ASSISTANCE
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.
/Samantha Sherman/
Examining Attorney
Law Office 123
571-270-0903
samantha.sherman@uspto.gov
RESPONSE GUIDANCE