To: | Beloved boards (harijs.abele@belovedboards.com) |
Subject: | U.S. Trademark Application Serial No. 88729074 - BELOVED BOARDS - N/A |
Sent: | March 19, 2020 12:36:14 PM |
Sent As: | ecom110@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88729074
Mark: BELOVED BOARDS
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Correspondence Address: BELOVED BOARDS; BELOVED BOARDS |
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Applicant: Beloved boards
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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: March 19, 2020
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.”
The USPTO applies the following legal authority to a trademark application:
• The Trademark Act of 1946 (15 U.S.C. §§1051 et seq.)
• The Trademark Rules of Practice (37 C.F.R. pts. 2, 3, 6, 7, 11)
• Precedential court and Trademark Trial and Appeal Board (TTAB) decisions
• The Trademark Manual of Examining Procedure (TMEP)
• The Trademark Trial and Appeal Board Manual of Procedure (TBMP)
The term “TMEP” refers to the USPTO’s Trademark Manual of Examining Procedure, a manual written by USPTO trademark attorneys that explains the laws and procedures applicable to the trademark application, registration, and post-registration processes. The USPTO updates the TMEP periodically to reflect changes in law, policy, and procedure.
An applicant may check the status of or view documents filed in an application or registration using the Trademark Status and Document Retrieval (TSDR) system. Enter the application serial number or registration number and click on “Status” or “Documents.”
FILING BASIS REQUIRED
An applicant may add one or more of the following four bases to an application after filing:
(1) Use of the mark in commerce under Trademark Act Section 1(a);
To amend an application to one based on use of the mark in commerce under Trademark Act Section 1(a), an applicant must provide the following: (1) a statement that “the mark is in use in commerce and was in use in commerce as of the application filing date;” (2) dates of first use of the mark; (3) a specimen for each class and a statement that “the specimen(s) was in use in commerce at least as early as the application filing date;” and (4) verification, in an affidavit or signed declaration under 37 C.F.R. §2.20, of these two statements and the dates of first use. See 37 C.F.R. §2.34(a)(1); TMEP §§903, 904.
For more information about Section 1(a) basis requirements, and instructions on how to satisfy them online using the Trademark Electronic Application System (TEAS) form, please go to the Basis webpage.
(2) A bona fide intention to use the mark in commerce under Section 1(b);
For more information about Section 1(b) basis requirements, and instructions on how to satisfy them online using the Trademark Electronic Application System (TEAS) form, please go to the Basis webpage.
(3) A foreign registration of the same mark for the same goods and/or services in an applicant’s country of origin, under Section 44(e); and/or
To amend an application to one based on a valid foreign registration of the same mark for the same goods and/or services under Trademark Act Section 44(e), an applicant must provide the following: (1) a true copy of the foreign registration or a proof of renewal from applicant’s country of origin, and, if the foreign registration or proof of renewal is not written in English, an English translation of it; (2) a list of goods and/or services that does not exceed the scope of the goods and/or services in the foreign registration; (3) the following statement, verified in an affidavit or signed declaration under 37 C.F.R. §2.20: “Applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date.” See TMEP §§1004, 1004.01(a)-(b).
Further, applicant’s country of origin must be a party to an international treaty or agreement with the United States that provides registration based on ownership of a foreign registration, or extends reciprocal registration rights to U.S. nationals. TMEP §1004.
For more information about Section 44(e) basis requirements, and instructions on how to satisfy them online using the Trademark Electronic Application System (TEAS) form, please go to the Basis webpage.
(4) A claim of priority based on an earlier-filed foreign application of the same mark for the same goods and/or services, which is filed within six months after the filing date of the foreign application, under Section 44(d).
Further, applicant’s country of origin and the country where the foreign application is filed must be a party to an international treaty or agreement with the United States that provides a right of priority, or extends reciprocal rights to priority to U.S. nationals. TMEP §1003.
For more information about Section 44(d) basis requirements, and instructions on how to satisfy them online using the Trademark Electronic Application System (TEAS) form, please go to the Basis webpage.
DISCLAIMER
Applicant must disclaim the wording “BOARDS” because it merely describes an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services, and thus is an unregistrable component of the mark. See 15 U.S.C. §§1052(e)(1), 1056(a); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); TMEP §§1213, 1213.03(a).
“BOARD” is defined as “A flat, rigid piece of material on which a game is played, such as a checkerboard or chessboard.” The American Heritage (R) dictionary of the English language (6th ed.), http://search.credoreference.com/content/entry/hmdictenglang/board/0. The attached evidence from the applicant’s website shows this wording describes the form in which the goods are provided, i.e., “BOARDS”, or more specifically, busy boards. See http://www.belovedboards.com/product/busy-board-mini-bear/. Therefore, the wording merely describes the applicant’s goods, or the form in which they take.
A “disclaimer” is a statement in the application record that an applicant does not claim exclusive rights to an unregistrable component of the mark; a disclaimer of unregistrable matter does not affect the appearance of the mark or physically remove disclaimed matter from the mark. See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 978, 144 USPQ 433, 433 (C.C.P.A. 1965); TMEP §1213. An unregistrable component of a mark includes wording and designs that are merely descriptive of an applicant’s goods and/or services. 15 U.S.C. §1052(e); see TMEP §§1209.03(f), 1213.03 et seq. Such words or designs need to be freely available for other businesses to market comparable goods or services and should not become the proprietary domain of any one party. See Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 1560, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991); In re Aug. Storck KG, 218 USPQ 823, 825 (TTAB 1983).
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, 1040-41, 77 USPQ2d 1087, 1088-89 (Fed. Cir. 2005); TMEP §1213.01(b).
Applicant should submit a disclaimer in the following standardized format:
No claim is made to the exclusive right to use “BOARDS” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this disclaimer requirement online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/disclaimer.jsp.
COLOR CLAIM AND MARK DESCRIPTION – INACCURATE
A complete color claim must reference all the colors appearing in the drawing of the mark. See 37 C.F.R. §2.52(b)(1); TMEP §§807.07(a) et seq. Similarly, a complete description of a mark depicted in color must specify where the colors appear in the literal and design elements of the mark. See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §§807.07(a) et seq. If black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark, applicant must so specify in the description. See TMEP §807.07(d).
The following color claim and description are suggested, if accurate:
White Claimed As A Feature Of The Mark
Color claim: The colors light blue, gray and white are claimed as a feature of the mark.
Description: The mark consists of a light blue teddy bear with white eyes and nose and a white heart in the center of the body. Below the bear design is the stacked stylized wording “BE” over “LOVED” over “BOARDS”, all shown in grey. All other white areas represent transparent background and are not claimed as a feature of the mark.
White NOT Claimed As A Feature Of The Mark
Color claim: The colors light blue and gray are claimed as a feature of the mark.
Description: The mark consists of a light blue teddy bear with eyes and nose and a heart in the center of the body. Below the bear design is the stacked stylized wording “BE” over “LOVED” over “BOARDS”, all shown in grey. All white areas represent transparent background and are not claimed as a feature of the mark.
APPOINTMENT OF U.S. COUNSEL REQUIRED
Applicant must be represented by a U.S.-licensed attorney. An applicant whose domicile is located outside of the United States or its territories is foreign-domiciled and must be represented at the USPTO by an attorney who is an active member in good standing of the bar of the highest court of a U.S. state or territory. 37 C.F.R. §§2.11(a), 11.14; Requirement of U.S.-Licensed Attorney for Foreign-Domiciled Trademark Applicants & Registrants, Examination Guide 4-19, at I.A. (Rev. Sept. 2019). An individual applicant’s domicile is the place a person resides and intends to be the person’s principal home. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. A juristic entity’s domicile is the principal place of business; i.e., headquarters, where a juristic entity applicant’s senior executives or officers ordinarily direct and control the entity’s activities. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. Because applicant is foreign-domiciled, applicant must appoint such a U.S.-licensed attorney qualified to practice under 37 C.F.R. §11.14 as its representative before the application may proceed to registration. 37 C.F.R. §2.11(a). See Hiring a U.S.-licensed trademark attorney for more information.
To appoint a U.S.-licensed attorney. To appoint an attorney, applicant should submit a completed Trademark Electronic Application System (TEAS) Change Address or Representation form. The newly-appointed attorney must submit a TEAS Response to Examining Attorney Office Action form indicating that an appointment of attorney has been made and address all other refusals or requirements in this action, if any. Alternatively, if applicant retains an attorney before filing the response, the attorney can respond to this Office action by using the appropriate TEAS response form and provide his or her attorney information in the form and sign it as applicant’s attorney. See 37 C.F.R. §2.17(b)(1)(ii).
INFORMATION AND INQUIRIES REGARDING THIS ACTION
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.
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
How to respond. Click to file a response to this nonfinal Office action.
/Jennifer H. Dixon/
Trademark Examining Attorney
Law Office 110
571-272-9359
jennifer.dixon@uspto.gov (informal inquiries only)
RESPONSE GUIDANCE