Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

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:  January 12, 2022

 

This Office action is in response to applicant’s communication filed on December 14, 2021.

 

The refusal for an insufficient Section 2(f) claim is now made FINAL. See TMEP §1212.04; 37 C.F.R. §2.63(b). In addition, the disclaimer requirement is not made FINAL. See 37 C.F.R. §2.63(b).

 

SECTION 2(f) CLAIM INSUFFICIENT

 

Applicant has asserted a claim of acquired distinctiveness in part as to “PREMIER COLLECTION” based on five years’ use.  However, the application indicates that the applied-for mark is not currently in use but will be used by applicant in the future and applicant has failed to meet its burden of prove in showing that the applied-for mark has acquired distinctiveness.  Thus, this refusal is made FINAL.

 

Applicant asserted a claim of acquired distinctiveness under Trademark Act Section 2(f) based on applicant’s use of the mark in commerce with applicant’s goods for five years prior to filing the application.  See 15 U.S.C. §1052(f).  However, the application indicates that the mark is not currently in use but will be used by applicant in the future.  Thus, applicant needs to clarify whether applicant intends to claim acquired distinctiveness in his or her application or if applicant inadvertently included this claim of five years’ use.  See 37 C.F.R. §2.61(b); TMEP §814. 

 

An intent-to-use applicant who has used the same mark on related goods may assert a claim of acquired distinctiveness under Trademark Act Section 2(f) before filing an allegation of use, if applicant can establish that, as a result of applicant’s use of the same mark on other goods, the mark has become distinctive of the goods in the intent-to-use application, and that this previously created distinctiveness will transfer to the goods in the intent-to-use application when use in commerce begins.  In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1347, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001); In re Binion, 93 USPQ2d 1531, 1538 (TTAB 2009); TMEP §1212.09(a).

 

If applicant intends to maintain this claim, applicant must satisfy the requirements specified in the following paragraph.  See TMEP §1212.09(a)-(b).  If applicant does not intend to maintain this claim, applicant should request the Section 2(f) claim be deleted from the application.  See TMEP §1212.09(a).

 

The Trademark Trial and Appeal Board has set forth the following two requirements for showing that a mark in an intent-to-use application has acquired distinctiveness:

 

(1)        Applicant must establish that the same mark has acquired distinctiveness as to the other goods and/or services, by submitting evidence such as ownership of an active prior registration for the same mark for sufficiently similar or related goods and/or services, a prima facie showing of acquired distinctiveness based on five years’ use of the same mark with related goods and/or services, or actual evidence of acquired distinctiveness for the same mark with respect to the other goods and/or services; and

 

(2)        Applicant must show sufficient relatedness of the goods and/or services in the intent-to-use application and those for which the mark has acquired distinctiveness to warrant the conclusion that the previously created distinctiveness will transfer to the goods and/or services in the application upon use.  The showing necessary to establish relatedness will be decided on a case-by-case basis and will depend upon the nature of the goods and/or services involved and the language used to identify them in the application.

 

TMEP §1212.09(a); see Kellogg Co. v. Gen. Mills Inc., 82 USPQ2d 1766, 1770-71 (TTAB 2007); In re Rogers, 53 USPQ2d 1741, 1744-45 (TTAB 1999).

 

DISCLAIMER FINAL REQUIREMENT

 

In response to the disclaimer requirement in the initial Office Action, applicant asserted a claim of acquired distinctiveness under Section 2(f) based on five years’ use.  However, the Examining Attorney has refused the assertion as described above, and applicant has failed to disclaim the wording.   Thus, the requirement is now made FINAL.

 

Applicant must disclaim the wording “PREMIER COLLECTION” in the mark because it is merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use 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). 

 

As seen in the previously attached evidence from Merriam-Webster shows that the word “COLLECT,” the verb form for the word “COLLECTION” means “to bring together into one body or place,” and that the word “PREMIER” means “first in position, rank, or importance.”  

 

In addition, the attached third-party evidence shows other companies using the wording to describe related goods of superior quality.  Thus, the wording merely is merely laudatory of the supposed superior quality of the goods which are aggregated into a group of items available for purchase.

 

Applicant may respond to this issue by submitting a disclaimer in the following format: 

 

No claim is made to the exclusive right to use “PREMIER COLLECTION” apart from the mark as shown. 

 

For an overview of disclaimers and instructions on how to provide one using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage. 

 

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.

 

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).

 

 

/Marcya N. Betts/

/Marcya N. Betts/

Examining Attorney

Law Office 106

(571) 272-4913

Marcya.Betts@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 January 12, 2022 for

U.S. Trademark Application Serial No. 90097980

 

A USPTO examining attorney has reviewed your trademark application and issued an Office action.  You must respond to this Office action in order to avoid your application abandoning.  Follow the steps below.

 

(1)  Read the Office action HERE.  This email is NOT the Office action.

 

(2)  Respond to the Office action by the deadline using the Trademark Electronic Application System (TEAS).  Your response must be received by the USPTO on or before 11:59 p.m. Eastern Time of the last day of the response period.  Otherwise, your application will be abandoned.  See the Office action itself regarding how to respond.

 

(3)  Direct general questions about using USPTO electronic forms, the USPTO website, the application process, the status of your application, and whether there are outstanding deadlines to the Trademark Assistance Center (TAC).

 

After reading the Office action, address any question(s) regarding the specific content to the USPTO examining attorney identified in the Office action.

 

 

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 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 may mail or email you trademark-related offers and notices – most of which require fees.  The USPTO will only email official USPTO correspondence from the domain “@uspto.gov.”

 

·         Hiring a U.S.-licensed attorney.  If you do not have an attorney and are not required to have one under the trademark rules, we encourage you to hire a U.S.-licensed attorney specializing in trademark law to help guide you through the registration process.  The USPTO examining attorney identified above is not your attorney and cannot give you legal advice, but rather works for and represents the USPTO in trademark matters.