To: | Santana Tesoro, LLC (trademarks@donahue.com) |
Subject: | U.S. Trademark Application Serial No. 88797104 - MIRAYO BY SANTANA - 24814.31.08 |
Sent: | July 06, 2020 09:21:43 AM |
Sent As: | ecom105@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88797104
Mark: MIRAYO BY SANTANA
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Correspondence Address: 1999 HARRISON STREET, 26TH FLOOR
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Applicant: Santana Tesoro, LLC
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Reference/Docket No. 24814.31.08
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: July 06, 2020
INTRODUCTION:
The Office is in receipt of applicant’s incoming communication dated Jun. 19, 2020.
The ID requirement is satisfied.
The requirement to delete the black diagonal lines is satisfied.
The name of a living individual inquiry requirement is satisfied.
The mark description requirement is maintained and continued. See prior office action.
DRAWING AMENDMENT NOT ACCEPTED – MATERIAL ALTERATION:
The proposed amended drawing shows the mark as omitting and cutting off approximately the bottom 25% of the original drawing. Additionally, the shield-shape border in the amended drawing appears to overlap more portions of design elements in comparison to the original drawing. The center band in the amended drawing shows two red irregular shapes on each side. However, the original drawing shows one irregular shape on each side. Other material design element differences exist between the original and amended drawings.
The USPTO cannot accept an amendment to a mark if it will materially alter the mark in the drawing filed with the original application, or in a previously accepted amended drawing. 37 C.F.R. §2.72(a)(2), (b)(2); TMEP §807.14. An amendment to the mark is material when the USPTO would need to republish the mark with the change in the USPTO Trademark Official Gazette to fairly present the mark to the public. In re Thrifty, Inc., 274 F.3d 1349, 1352, 61 USPQ2d 1121, 1123-24 (Fed. Cir. 2001) (citing In re Hacot-Columbier, 105 F.3d 616, 620, 41 USPQ2d 1523, 1526 (Fed. Cir. 1997)); TMEP §807.14.
That is, an amendment is material if the altered mark does not retain “the essence of the original mark” or if the new and old forms do not “create the impression of being essentially the same mark.” In re Hacot-Columbier, 105 F.3d at 620, 41 USPQ2d at 1526 (quoting Visa Int’l Serv. Ass’n v. Life-Code Sys., Inc., 220 USPQ 740, 743-44 (TTAB 1983)); see, e.g., In re Who? Vision Sys., Inc., 57 USPQ2d 1211, 1218 (TTAB 2000) (amendment from “TACILESENSE” to “TACTILESENSE” a material alteration); In re CTB Inc., 52 USPQ2d 1471, 1475 (TTAB 1999) (amendment of TURBO with a design to just the typed word TURBO without design a material alteration).
When determining materiality, the addition of any element that would require a further search of the USPTO database for conflicting marks is also relevant. In re Guitar Straps Online LLC, 103 USPQ2d 1745, 1747 (TTAB 2012) (citing In re Pierce Foods Corp., 230 USPQ 307, 308-09 (TTAB 1986)); In re Who? Vision Sys. Inc., 57 USPQ2d at 1218-19; TMEP §807.14.
In the present case, applicant’s proposed amendment would materially alter the mark in the drawing filed with the original application or as previously amended because (among other things) certain non-generic design elements are omitted, cut-off, and blocked by the shield-shape border.
To avoid the application from abandoning, applicant must respond to this issue. TMEP §807.17. Applicant may respond by (1) withdrawing the request to amend the drawing, or (2) arguing that the proposed amendment is not a material alteration of the mark.
For more information about changes to the mark in the drawing after the application filing date, please go to the Drawing webpage.
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