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:  May 06, 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.

 

NOTICE:

 

The Office is in receipt of applicant’s Voluntary Amendment dated April 27, 2020.  The request for design code consistency among it’s co-pending applications is acceptable and has been processed. 

 

NO CONFLICTING MARKS:

 

The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d).  15 U.S.C. §1052(d); TMEP §704.02.

 

IDENTIFICATION OF SERVICES:

 

Class 44 -

 

In Class 44, applicant’s identification is: “Providing information related to cannabis.” 

 

The above ID is unacceptable because it is indefinite and falls in multiple classes.  The type and purpose of the cannabis information must be stated.  See below for suggestions.

 

Proper classification of goods and services is a purely administrative matter within the sole discretion of the USPTO.  See In re Faucher Indus. Inc., 107 USPQ2d 1355, 1357 (TTAB 2013) (quoting In re Tee-Pak, Inc., 164 USPQ 88, 89 (TTAB 1969)).

 

Taking the above together, applicant may adopt the following:

 

Class 42: Providing medical research and scientific research information in the field of cannabis

 

Class 44: Providing medical information in the field of cannabis

 

Class 45: Providing legal information in the field of cannabis

 

See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

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.

 

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).

 

MULTI-CLASS REQUIREMENTS:

 

The application identifies services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(1)       List the services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)       Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp).  The application identifies services that are classified in at least 3 classes; however, applicant submitted a fee sufficient for only 1 class.  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/multiclass.jsp.

 

FEES FOR ADDITIONAL CLASSES:

 

The fee for adding classes to a TEAS Standard application is $275 per class.  See 37 C.F.R. §2.6(a)(1)(iii).  For more information about adding classes to an application, see the Multiple-class Application webpage.

 

DELETION FROM DRAWING:

 

Applicant must submit a new drawing showing the black diagonal lines deleted from the mark because it appears to be a graphical design error.  This matter is not part of the mark.  See 37 C.F.R. §2.72; TMEP §§807.02, 807.14(a).  The black diagonal line overlaps all the design elements and extends from the left portion of the flower to the outside white colored background and another diagonal black line appears in the top right portion.   

 

Although applicant must delete this matter, applicant may not make any other changes or amendments that would materially alter the applied-for mark on the drawing.  See 37 C.F.R. §2.72; TMEP §§807.14 et seq.  For more information about changes to the mark in the drawing after the application filing date, see the Drawing webpage.

 

COMPLETE MARK DESCRIPTION REQUIRED:

 

Applicant must submit an amended description of the mark because the current one is incomplete and does not describe all the significant aspects of the mark.  37 C.F.R. §2.37; see TMEP §§808.01, 808.02.  Descriptions must be accurate and identify all the literal and design elements in the mark.  See 37 C.F.R. §2.37; TMEP §§808 et seq. 

 

The following description is suggested, if accurate: 

 

The mark consists of the stylized wording “Mirayo by SANTANA” in a stacked formation colored white featuring gray shading inside a shield-shaped design.  The black colored shield-shaped design is outlined in black featuring a white border with gray shading.  Inside both the left and right portions of the shield-shaped design are two diagonal parallel lines colored white featuring gray shading.  Above “Mirayo” are 16 small circles colored white featuring gray shading.  Below “SANTANA” is a mandala flower-like design outlined in white featuring gray shading and colored black.  Below the mandala flower-like design are 7 small circles colored white featuring gray shading.  Behind the shield-shaped design is a symmetric psychedelic design.  Behind the top portion of the shield is a turquoise band featuring a red colored curl design on the left and right sides. The turquoise band features a small white colored band at the bottom. Above and below the turquoise band is a mesh-like design with the mesh colored blue and the spacing colored white. At the very top overlapping the mesh design are two designs that looks like the bottom portion of a fleur-de-lis colored red, pink, and orange and featuring two turquoise circles each.  Below the circles is a small white horizontal band.  Behind the bottom left and right portions of the shield-like design are designs that look like a fleur-de-lis colored red, orange, green, and white. At the very bottom is a design that looks like three incomplete connected triangular-like shapes outlined in red and colored orange.  The body of the triangular shape features a design that looks like an incomplete leafy-like top half of a star and that the outer area is colored green and the inside is colored turquoise featuring two drop-like shapes colored orange and an orange circle featuring a smaller red circle inside.            

 

The color(s) gray, black, white, red, pink, green, turquoise, and orange is/are claimed as a feature of the mark.

 

NAMES OF LIVING INDIVIDUAL INQUIRY:

 

Applicant must clarify whether the names MIRAYO and SANTANA in the mark identifies particular living individuals.  See 37 C.F.R. §2.61(b); TMEP §§813, 1206.03.  In this case, the application neither specifies whether the names in the mark identifies particular living individuals nor includes a written consent.  See TMEP §§813.01(a)-(b), 1206.04(a), 1206.05.

 

To register a mark that consists of or comprises the name of a particular living individual, including a first name, pseudonym, stage name, or nickname, an applicant must provide a written consent personally signed by the named individual.  15 U.S.C. §1052(c); TMEP §§813, 1206.04(a).  

 

Accordingly, if the name in the mark does not identify a particular living individual, applicant must submit a statement to that effect (e.g., “The name shown in the mark does not identify a particular living individual.”). 

 

However, if the name in the mark does identify a particular living individual, applicant must submit both of the following: 

 

(1)       The following statement:  “The name(s) shown in the mark identifies a living individual(s) whose consent(s) to register is made of record.”  If the name is a pseudonym, stage name, or nickname, applicant must provide the following statement:  “MIRAYO and SANTANA identifies <specify actual name>, a living individual whose consent is of record.”

 

(2)       A written consent, personally signed by the named individual(s), as follows:  “I, <specify name>, consent to the use and registration of my name, <name>, as a trademark and/or service mark with the USPTO.”

 

For an overview of the requirements for names appearing in marks, and instructions on how to satisfy this requirement using the online Trademark Electronic Application System (TEAS) response form, see the Name/Portrait/Signature of Particular Living Individual in Mark webpage. 

 

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. 

 

If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.

 

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

 

 

/Simon Teng/

Simon Teng

Trademark Examining Attorney

Law Office 105

(571) 272-4930

simon.teng@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 May 06, 2020 for

U.S. Trademark Application Serial No. 88797104

 

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. 

 

 

/Simon Teng/

Simon Teng

Trademark Examining Attorney

Law Office 105

(571) 272-4930

simon.teng@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 May 06, 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.”