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:  January 28, 2021

 

INTRODUCTION

 

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.

 

SEARCH OF USPTO DATABASE OF 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.

 

SUMMARY OF ISSUES

 

·         Section 1 and 45 Refusal – Specimen Insufficient

·         Description of the Mark and Color Claim

·         Disclaimer Required

 

SECTION 1 AND 45 REFUSAL – SPECIMEN INSUFFICIENT

 

Registration is refused because the specimen in International Class 045 is illegible and does not show the applied-for mark as actually used in commerce.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a), (c); TMEP §§904, 904.07(a), 1301.04(g)(i).  An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark as actually used in commerce for each international class of services identified in the application or amendment to allege use.  15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).  More specifically, the image in the specimen is too small for the Examining Attorney to verify that the version of the applied-for mark depicted in the specimen matches that contained within the drawing.

 

EXAMPLES OF ACCEPTABLE SPECIMENS

 

Specimens for services must show a direct association between the mark and the services and include:  (1) copies of advertising and marketing material, (2) a photograph of business signage or billboards, or (3) materials showing the mark in the sale, rendering, or advertising of the services.  See 37 C.F.R. §2.56(b)(2), (c); TMEP §1301.04(a), (h)(iv)(C). 

 

Any webpage printout or screenshot submitted as a specimen must include the webpage’s URL and the date it was accessed or printed on the specimen itself, within the TEAS form that submits the specimen, or in a verified statement under 37 C.F.R. §2.20 or 28 U.S.C. §1746 in a later-filed response.  See 37 C.F.R. §2.56(c); TMEP §§904.03(i), 1301.04(a).

 

RESPONDING TO SECTION 1 AND 45 REFUSAL – SPECIMEN INSUFFICIENT

 

Applicant may respond to this refusal by satisfying one of the following for each applicable international class:

 

(1)        Submit a true copy of the originally submitted specimen that is clear and legible, with a statement by the person who transmitted it that it is a true copy of the specimen that was originally submitted. 

 

(2)        Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the goods and/or services identified in the application or amendment to allege use.  A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20:  “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.”  The substitute specimen cannot be accepted without this statement.

 

(3)        Amend the filing basis to intent to use under Section 1(b) (which includes withdrawing an amendment to allege use, if one was filed), as no specimen is required before publication.  This option will later necessitate additional fee(s) and filing requirements, including a specimen.

 

For an overview of the response options referenced above and instructions on how to satisfy these options using the online Trademark Electronic Application System (TEAS) form, see the Specimen webpage.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusal, applicant must also respond to the requirements set forth below.

 

DESCRIPTION OF THE MARK AND COLOR CLAIM

 

The drawing shows the applied-for mark in various colors, including white; however, the color claim and description of the mark do not reference the color white.  The color claim and description must be complete and reference all the colors in the mark.  See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §§807.07(a) et seq.  Therefore, applicant must clarify whether white is used as a color in the mark or to indicate background, outlining, shading, and/or transparent areas.  TMEP §807.07(d); see 37 C.F.R. §2.61(b).

 

Regardless of how white is handled, applicant should also state in the mark description that the wording is “stylized”, account for the dot in the center of the scale’s fulcrum, and that the circular border “broken up” by the lines.

 

To clarify how white is being used in the mark, applicant may satisfy one of the following:

 

(1)        If white is a feature of the mark, applicant must amend the color claim to include them and amend the description to identify where black, white and/or gray appear in the literal and/or design elements of the mark.  The following color claim and description are suggested, if accurate, changes are shown in bold:

 

Color claim:  The colors gold and white are claimed as a feature of the mark.

 

Description:  The mark consists of a gold circle bordered on the inside and outside by a solid line, and broken up by white straight lines that run perpendicular to the circle. The inside of the circle is shaded white and has the gold stylized wording "FIAT JUSTITIA" which follow the curve of the top of the circle. In the middle of the circle is a gold beam scale, with a white dot in the center of the fulcrum. Below that is the gold stylized wording "RUAT CAELUM" which follow the curve of the bottom of the circle. Curved lines separate the wording "FIAT" and "RUAT", and the wording "JUSTITIA" and "CAELUM". 

 

(2)        If white is not a feature of the mark, applicant must amend the description to state that white represents background, outlining, shading and/or transparent areas and are not part of the mark.  The following description is suggested, if accurate, changes are shown in bold:

 

The mark consists of a gold circle bordered on the inside and outside by a solid line, and broken up by straight lines that run perpendicular to the circle. Inside is the gold stylized wording "FIAT JUSTITIA" which follow the curve of the top of the circle. In the middle of the circle is a gold beam scale with a dot in the center of the fulcrum. Below that is the gold stylized wording "RUAT CAELUM" which follow the curve of the bottom of the circle. Curved lines separate the wording "FIAT" and "RUAT", and the wording "JUSTITIA" and "CAELUM".  The color white represents mere transparent background area and is not claimed as a feature of the mark.

 

TMEP §807.07(d).

 

DISCLAIMER REQUIRED

 

Applicant must disclaim all the wording in the mark because it is commonly used in applicant’s particular trade or industry to impart information about the services and would not be perceived as distinguishing the services and identifying their source; thus the wording does not function as a mark.  See 15 U.S.C. §§1051-1053, 1127; In re Boston Beer Co., 198 F.3d 1370, 1372-74, 53 USPQ2d 1056, 1058-59 (Fed. Cir. 1999); In re Aerospace Optics, Inc., 78 USPQ2d 1861, 1864 (TTAB 2006); TMEP §§807.14(a), 1202.04, 1213.03(a), (b).

 

Determining whether a term functions as a trademark or service mark depends on how such matter would be perceived by the relevant public.  In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229 (TTAB 2010); In re Aerospace Optics, Inc., 78 USPQ2d at 1862; TMEP §1202.04.  “The more commonly a [term] is used, the less likely that the public will use it to identify only one source and the less likely that it will be recognized by purchasers as a trademark [or service mark].”  In re Hulting, 107 USPQ2d 1175, 1177 (TTAB 2013) (quoting In re Eagle Crest, Inc., 96 USPQ2d at 1229); TMEP §1202.04.

 

The attached evidence from Merriam Webster online dictionary shows the wording means “let justice be done, though the heavens fall”.  See attached.  The attached evidence from Arnet Fox shows that this term is commonly used by those in the legal field.  Because consumers are accustomed to seeing this term commonly used by those in the legal field to impart information to consumers, they will perceive this term or slogan only as informational matter rather than as a trademark or service mark that distinguishes applicant’s services from those of others and identifies the source of applicant’s services.

 

Non-English wording that is merely descriptive, deceptively misdescriptive, geographically descriptive, generic, or informational in connection with the identified services, is an unregistrable component of the mark that is subject to disclaimer.  TMEP §§1213.03(a), 1213.08(d); see Bausch & Lomb Optical Co. v. Overseas Fin. & Trading Co., 112 USPQ 6, 8 (Comm’r Pats. 1956).  The disclaimer must refer to the actual non-English wording that appears in the mark, not the English translation of that wording.  TMEP §1213.08(d).

 

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

 

No claim is made to the exclusive right to use “FIAT JUSTITIA RUAT CAELUM” 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.

 

ASSISTANCE

 

Please call or email the assigned Trademark Examining Attorney with questions about this Office Action.  Although an Examining Attorney cannot provide legal advice, the Examining Attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office Action.  See TMEP §§705.02, 709.06. 

 

The USPTO does not accept emails as responses to Office Actions; however, emails can be used for informal communications and are included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

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

 

 

/Jared M. Mason/

Trademark Examining Attorney

Law Office 119

(571) 272-4146

Jared.Mason@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 28, 2021 for

U.S. Trademark Application Serial No. 90186246

 

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. 

 

 

/Jared M. Mason/

Trademark Examining Attorney

Law Office 119

(571) 272-4146

Jared.Mason@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 January 28, 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.”