To: | Santana Tesoro, LLC (trademarks@donahue.com) |
Subject: | U.S. Trademark Application Serial No. 88797104 - MIRAYO BY SANTANA - 24814.31.08 |
Sent: | October 30, 2020 05:40:48 PM |
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
|
|
Correspondence Address: 1999 HARRISON STREET, 26TH FLOOR
|
|
Applicant: Santana Tesoro, LLC
|
|
Reference/Docket No. 24814.31.08
Correspondence Email Address: |
|
FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA). A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action.
Issue date: October 30, 2020
The Office is in receipt of applicant’s incoming communication dated Sept. 23, 2020.
The mark description requirement is satisfied.
The following requirement is now made FINAL:
See 37 C.F.R. §2.63(b).
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.
Applicant’s reliance on the non-precedential decision In re Hot Stuff Foods, LLC (TTAB 2013) is misplaced. Prior decisions and actions of other trademark examining attorneys in registering other marks have little evidentiary value and are not binding upon the USPTO or the Trademark Trial and Appeal Board. TMEP §1207.01(d)(vi); see In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1793 n.10 (TTAB 2017). Each case is decided on its own facts, and each mark stands on its own merits. In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d at 1793 n.10 (quoting In re Boulevard Entm’t, 334 F.3d 1336, 1343, 67 USPQ2d 1475, 1480 (Fed. Cir. 2003)).
Second, In re Hot Stuff Foods the marks at issue was a pizza slice. The original drawing had cheese and toppings on the pizza, while the amended drawing removed the cheese and toppings. Both design elements projected the overall commercial impression of a pizza slice. Further, all pizza slices fall under design code 08.01.12 (Pizza, slices of pizza). However, here, the bottom portion of the original drawing contains an arbitrary and distinctive element. There is no design code in the other elements of the mark that encompasses that bottom portion. Put in another way, a search of the amended drawing would not encompass the bottom portion of the original drawing.
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 request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).
/Simon Teng/
Simon Teng
Trademark Examining Attorney
Law Office 105
(571) 272-4930
simon.teng@uspto.gov
RESPONSE GUIDANCE