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:  November 01, 2021

This action responds to applicant’s communication dated September 22, 2021.

The color claim, domicile and transliteration requirements are satisfied.

The request for information requirement is satisfied.

Prior pending application serial no. 87685664 is abandoned and no longer a potential bar to registration.

Upon further consideration, the refusals with respect to U.S. Regs. 2934457, 4853634, 5283643 and prior pending serial no. 87881178 are withdrawn.

• The Section 2(d) refusals with respect to U.S. Regs. 2143628, 3614296, 4714298, 4770712,   4868593, 5032146, and 5357535 are continued and maintained.

• The description requires further clarification. The applicant adopted the suggested description of the mark provided by the examining attorney.  Upon further review, the reference to being outlined in white and outlined in black renders it confusing and inaccurate. The examining attorney apologizes for any inconvenience to the applicant.

• The applicant has stated that only the coffee products are from Brazil (South America).  Thus the following disclaimer requirement is issued with respect to “coffee” in Class 30.

Disclaimer of geographic wording with respect to “coffee”

Applicant must disclaim the wording “AMAZON” and the characters that transliterate to “AL-AMAZON” meaning “The Amazon” because it is primarily geographically descriptive of the origin of applicant’s coffee goods.  See 15 U.S.C. §1052(e)(2); In re Societe Generale des Eaux Minerales de Vittel S.A., 824 F.2d 957, 959, 3 USPQ2d 1450, 1451-52 (Fed. Cir. 1987); TMEP §§1210.01(a), 1210.06(a), 1213.03(a).

The Amazon Rainforest is a “large tropical rainforest occupying the drainage basin of the Amazon River and its tributaries in northern South America and covering an area of 2,300,000 square miles (6,000,000 square km). Comprising about 40 percent of Brazil’s total area, it is bounded by the Guiana Highlands to the north, the Andes Mountains to the west, the Brazilian central plateau to the south, and the Atlantic Ocean to the east.”  A variety of goods, particularly food, originate in this geographic location.  See attached information.  The applicant has stated that its coffee originates in Brazil. Given the extent of the Amazon as part of Brazil’s geographic composition, the goods originate in the Amazon and thus the wording is geographically descriptive of the goods.

While the term AMAZON may have different meanings, it is clear within the context of applicant’s goods that the term has a geographic meaning.  Additionally, the Office routinely holds Amazon geographically descriptive for goods originating there (see, e.g., the registrations cited against the applicant).  The applicant has also stated in its response that it is a geographic term.

Thus, the term AMAZON is geographically descriptive with respect to “coffee” in the identification.

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

No claim is made to the exclusive right to use “AMAZON” and “the non-Latin characters that transliterate to AL-AMAZON” in connection with “coffee” 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.

Description of the mark further amendment

The applicant adopted the suggested description of the mark provided by the examining attorney.  Upon further review, the reference to being outlined in white and outlined in black is inaccurate because the wording is in white and outlined in black.  Additionally, the black under the Arabic characters was omitted from the description.

Applicant must submit an amended description of the mark that agrees with the mark on the drawing.  37 C.F.R. §2.37; see TMEP §§808.01, 808.02.  The current description is inconsistent with the mark on the drawing and thus is inaccurate.  37 C.F.R. §2.37; see TMEP §§808.01, 808.02.  Descriptions must be accurate and identify only those literal and design elements appearing in the mark.  See 37 C.F.R. §2.37; TMEP §§808.02, 808.03(d). 

The following description is suggested, if accurate:  The mark consists of the stylized wording "AMAZON" in white and outlined in black. A design with crossed set of curled lines, gold on the left and black on the right appears above Arabic characters.  The Arabic characters appear in shades of gold and outlined on the bottom of each character in black; they appear above the wording AMAZON. Two gold and white leaves in the form of a "V" appear both above the first Arabic character on the left and in the center of the "O" in AMAZON. The entire mark appears on a white background.

Section 2(d) refusals – continued and maintained - U.S. Regs. 2143628, 3614296, 4714298, 4770712,   4868593, 5032146, and 5357535

As discussed in the March 22, 2021 Office Action, the marks are similar and the goods are the same or broadly written so as to encompass the registrants’ more specifically identified goods.

The applicant’s mark is AMAZON with non-Latin characters that transliterate to the same wording. While some of the registrants’ marks contain additional wording, it is descriptive or generic of the goods.  Here, the applicant’s mark does not create a distinct commercial impression from the registered mark because it contains some of the wording in the registered mark and does not add any wording that would distinguish it from that mark.  Lastly, the addition of a design element in the applicant’s mark does not obviate the refusal. When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services.  In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii).  Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed.  In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).

The applicant and registrants have overlapping goods and/or broadly written goods such that it encompasses the registrants’ more specifically identified goods.

General Response Information

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

 /Andrea Butler/

Trademark Attorney

Law Office 124

571-272-7491

andrea.butler@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 November 01, 2021 for

U.S. Trademark Application Serial No. 90254329

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. 

 /Andrea Butler/

Trademark Attorney

Law Office 124

571-272-7491

andrea.butler@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 November 01, 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.”