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:  June 03, 2021

 

This letter responds to the incoming response dated May 3, 2021.

 

The examining attorney is issuing this non-final Office action due to the following issue that must be addressed

 

SEARCH OF OFFICE’S DATABASE OF MARKS

 

The Office records have been searched and there are no similar registered or pending marks that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.

 

However, applicant must address the following issue(s).

 

SUMMARY OF ISSUES:

• Advisory concerning potential refusal for failure to function as a trademark; and
• Requirement for an acceptable description of the mark that describes all elements.

 

Advisory concerning potential refusal for FAILURE TO FUNCTION AS A TRADEMARK

 

Applicant is advised that, upon consideration of an allegation of use, registration may be refused on the ground that the applied-for mark, as used on the specimen of record, is merely informational language concerning the goods and services of the applicant and would not be recognized by consumers as a source identifying trademark.  Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051-1052, 1127; see In re Benetton Grp. S.p.A., 48 USPQ2d 1214, 1215-16 (TTAB 1998); In re Anton/Bauer, Inc., 7 USPQ2d 1380, 1381 (TTAB 1988); TMEP §§904.07(b), 1202.11.

 

Whether a designation functions as a mark depends on the commercial impression it makes on the relevant public; that is, whether purchasers would be likely to regard it as a source-indicator for the goods.  See In re Keep A Breast Found., 123 USPQ2d 1869, 1879 (TTAB 2017) (quoting In re Eagle Crest Inc., 96 USPQ2d 1227, 1229 (TTAB 2010)); TMEP §1202.  The specimen and any other relevant evidence of use is reviewed to determine whether an applied-for mark is being used as a trademark.  In re Bose Corp., 546 F.2d 893, 897, 192 USPQ 213, 216 (C.C.P.A. 1976); In re Volvo Cars of N. Am., Inc., 46 USPQ2d 1455, 1459 (TTAB 1998). 

 

Not every designation that appears on a product or its packaging functions as a trademark, even though it may have been adopted with the intent to do so.  See In re Peace Love World Live, LLC, 127 USPQ2d 1400, 1404 (TTAB 2018) (citing In re Pro-Line Corp., 28 USPQ2d 1141, 1142 (TTAB 1993)).  A designation can only be registered when purchasers would be likely to regard it as a source-indicator for the goods.  See In re Manco, Inc., 24 USPQ2d 1938, 1941 (TTAB 1992) (citing In re Remington Prods. Inc., 3 USPQ2d 1714, 1715 (TTAB 1987)); TMEP §1202.

 

In this case, the mark comprises the wording THE DRAGON 100 PATH above a complex chart including a bar graph and various other information that is descriptive of the philosophy of the applicant that will be contained the intended goods and services.  The relevant goods of the applicant comprise downloadable video recordings and printed educational books.  The use of the proposed mark on the goods may not be perceived as a source-identifying mark due to the complex and intricate nature of the information contained in the chart and since consumers will recognize the chart as the system or philosophy of the applicant rather than a source-identifying mark.

 

Description of the mark incomplete

 

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 phrase THE DRAGON 100 PATH above a chart comprising a bar graph that has the following vertical labels on the left: $100M+, $30M to $100M, $10M to $30M, $1M to $3M, $300K to $1M, $100K to $300K, $40K to $100K, and 0 to $40K; and the following horizontal labels underneath the bar chart: DREAMER, FOUNDER, TECHNICIAN, MARKETER, OPERATOR, LEADER, MANAGER, INNOVATOR, and ACQUIRER.  Underneath the bar graph appears another chart with the horizontal labels on top comprising the same terms as the bottom of the horizontal bar graph labels, and the vertical labels to the left consist of the terms PRIMARY QUESTION, BREAKTHROUGH QUESTION, PROBLEM, and OPPORTUNITY.  Inside the lower chart and underneath the horizontal bar graph labels appear the wording HOW DO I GET STARTED?, HOW CAN I SURVIVE?, WHAT DO I NEED TO DO TODAY?, HOW AM I GOING TO INCREASE SALES?, HOW CAN I GET MORE DONE?, WHERE ARE THE GOOD PEOPLE?, HOW CAN I HOLD MY TEAM ACCOUNTABLE?, HOW DO I EMPOWER MY LEADERSHIP TEAM?, and WHAT SHOULD I INVEST IN? from left to right on the first row.  The second row of the lower chart contains the wording WHERE’S THE BLUE OCEAN?, WHO CAN BE MY MENTOR?, HOW DO I MAKE THAT FIRST PROFITABLE SALE?, HOW CAN I SELL MORE TO OUR EXISTING CUSTOMERS?, HOW DO I APPLY PROCESS AND STRUCTURE?, HOW CAN I CREATE AN ENVIRONMENT SO THAT GOOD PEOPLE WILL JOIN OUR TEAM?, HOW CAN I CREATE MORE LEADERS?, HOW CAN I STAY IN MY ZONE OF entrepreneurial GENIUS?, and WHAT’S MY LEGACY? from left to right.  The third row contains the wording LACK OF DIRECTION, LACK OF CAPITAL, LACK OF LEADS, LACK OF BACKEND, LACK OF TEAM, LACK OF LEADERSHIP, LACK OF TRANSPARENCY, LACK OF SUSTAINABILITY, and LACK OF DIVERSITY from left to right.  The fourth row contains the wording GOT NOTHING TO LOSE, FAIL FAST AND PIVOT FASTER, BUILDING A LOYAL GROUP OF CUSTOMERS, OFFER ADDITIONAL PROFITABLE PRODUCTS AND SERVICES, ATTRACTING COMPETENT PEOPLE WHO SHARE YOUR VISION, DELEGATING TO FREE UP YOUR TIME, HIRING PEOPLE SMARTER THAN YOU, HIRING A CEO OR COO TO RUN THE BUSINESS, and CONVERTING PROFITS INTO INVESTMENTS from left to right.  At the bottom of the chart appears the wording DRAGON IN THE MAKING, RED DRAGON, BLACK DRAGON, and DRAGON X from left to right underneath circular dots and vertical lines which appear at intervals equal to roughly two bars on the graph.

 

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

 

 

 

/Sung In/

Sung In

Trademark Examining Attorney

Law Office 103

Phone: (571) 272-9097

Fax: (571) 272-9103

Email: sung.in@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 June 03, 2021 for

U.S. Trademark Application Serial No. 90129048

 

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. 

 

 

/Sung In/

Sung In

Trademark Examining Attorney

Law Office 103

Phone: (571) 272-9097

Fax: (571) 272-9103

Email: sung.in@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 June 03, 2021, 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.”