To: | GIDA INTERNATIONAL GROUP (GIDAINTUSA@GMAIL.COM) |
Subject: | U.S. Trademark Application Serial No. 90340807 - GIDA INTERNATIONAL GROUP ONLY FROM - N/A |
Sent: | May 17, 2021 11:14:24 PM |
Sent As: | ecom112@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90340807
Mark: GIDA INTERNATIONAL GROUP ONLY FROM
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Correspondence Address:
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Applicant: GIDA INTERNATIONAL GROUP
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Reference/Docket No. N/A
Correspondence Email Address: |
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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: May 17, 2021
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
1. No filing basis for application.
2. Applicant must amend the application to seek registration on the principal register.
3. Application shows two marks - mark on drawing page controls.
4. Drawing of the mark – must delete “®” symbol.
5. Description of mark required.
6. Disclaimer.
7. Suggest hiring trademark counsel.
INFORMALITIES
NO FILING BASIS FOR APPLICATION
An applicant may add one or more of the following four bases to an application after filing:
(1) Use of the mark in commerce under Trademark Act Section 1(a);
(2) A bona fide intention to use the mark in commerce under Section 1(b);
(3) A foreign registration of the same mark for the same goods and/or services in an applicant’s country of origin, under Section 44(e); and/or
(4) A claim of priority based on an earlier-filed foreign application of the same mark for the same goods and/or services, which is filed within six months after the filing date of the foreign application, under Section 44(d).
Although an applicant may assert more than one basis, an applicant may not assert both Section 1(a) for use and Section 1(b) for intent to use for identical goods and/or services. 37 C.F.R. §2.34(b); TMEP §806.02(b).
For more information about the different legal requirements for each basis, for submitting more than one basis, and for instructions on how to satisfy these requirements online using the Trademark Electronic Application System (TEAS) form, please go to the Basis webpage.
To amend an application to one based on use of the mark in commerce under Trademark Act Section 1(a), an applicant must provide the following: (1) a statement that “the mark is in use in commerce and was in use in commerce as of the application filing date;” (2) dates of first use of the mark; (3) a specimen for each class and a statement that “the specimen(s) was in use in commerce at least as early as the application filing date;” and (4) verification, in an affidavit or signed declaration under 37 C.F.R. §2.20, of these two statements and the dates of first use. See 37 C.F.R. §2.34(a)(1); TMEP §§903, 904.
For more information about Section 1(a) basis requirements, and instructions on how to satisfy them online using the Trademark Electronic Application System (TEAS) form, please go to the Basis webpage.
For more information about Section 1(b) basis requirements, and instructions on how to satisfy them online using the Trademark Electronic Application System (TEAS) form, please go to the Basis webpage.
Further, applicant’s country of origin and the country where the foreign application is filed must be a party to an international treaty or agreement with the United States that provides a right of priority, or extends reciprocal rights to priority to U.S. nationals. TMEP §1003.
For more information about Section 44(d) basis requirements, and instructions on how to satisfy them online using the Trademark Electronic Application System (TEAS) form, please go to the Basis webpage.
To amend an application to one based on a valid foreign registration of the same mark for the same goods and/or services under Trademark Act Section 44(e), an applicant must provide the following: (1) a true copy of the foreign registration or a proof of renewal from applicant’s country of origin, and, if the foreign registration or proof of renewal is not written in English, an English translation of it; (2) a list of goods and/or services that does not exceed the scope of the goods and/or services in the foreign registration; (3) the following statement, verified in an affidavit or signed declaration under 37 C.F.R. §2.20: “Applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date.” See TMEP §§1004, 1004.01(a)-(b).
Further, applicant’s country of origin must be a party to an international treaty or agreement with the United States that provides registration based on ownership of a foreign registration, or extends reciprocal registration rights to U.S. nationals. TMEP §1004.
For more information about Section 44(e) basis requirements, and instructions on how to satisfy them online using the Trademark Electronic Application System (TEAS) form, please go to the Basis webpage.
APPLICANT MUST AMEND THE APPLICATION TO SEEK REGISTRATION ON THE PRINCIPAL REGISTER
Registration on the Supplemental Register is refused because applicant’s mark is eligible for registration on the Principal Register. TMEP §815.01; see 15 U.S.C. §1091(a). Applicant has sought registration of the applied-for mark on the Supplemental Register. See 15 U.S.C. §1091. However, applicant’s mark is eligible for registration on the Principal Register because it comprises or includes inherently distinctive matter. See TMEP §1212.
A mark that is eligible for registration on the Principal Register may not be registered on the Supplemental Register. Nazon v. Ghiorse, 119 USPQ2d 1178, 1182 (TTAB 2016); TMEP §815.01. Accordingly, applicant must amend the application to seek registration on the Principal Register.
APPLICATION SHOWS TWO MARKS - MARK ON DRAWING PAGE CONTROLS
When an application includes a mark in the body of the application and a different mark in the drawing or in the “Mark” field, the mark in the drawing controls for purposes of determining what the mark is. In re L.G. Lavorazioni Grafite, S.r.l., 61 USPQ2d 1063 (Dir USPTO 2001); TMEP §807.01. Therefore, the applied-for mark in this application is the mark in the drawing.
Please note: The applicant should crop the mark to include what the examining attorney assumes is the mark the applicant intended to apply for which is everything within the white square.
DRAWING OF THE MARK – MUST DELETE “®” SYMBOL
Applicant must submit a new drawing with the “®” symbol deleted from the drawing of the mark; this symbol is not part of the mark and is not registrable. See 37 C.F.R. §2.72; TMEP §807.14(a). Although applicant must delete this matter, applicant may not make any other changes or amendments that would materially alter the drawing of the mark. See 37 C.F.R. §2.72; TMEP §§807.14 et seq. For more information about deleting matter from the drawing, see the Drawing webpage.
Applicant may respond to this requirement by satisfying one of the following:
(1) If color is not a feature of the mark, applicant must submit a black-and-white drawing of the mark to replace the color drawing. See TMEP §807.07(a)(i). However, any other amendments to the drawing will not be accepted if they materially alter the mark. 37 C.F.R. §2.72; see TMEP §§807.14 et seq. Applicant must also submit a revised description of all literal and design elements in the mark, deleting any reference to color, if appropriate. 37 C.F.R. §2.37; see TMEP §§808.01, 808.02. The following description is suggested, if accurate: The mark consists of the wording GIDA INTERNATIONAL GROUP ONLY FROM NATURE.. represented in stylized font with the word GIDA on top and the wording INTERNATIONAL GROUP all within an oval, to the bottom left of the oval is a crescent, to the top right of the oval is a crescent, to the bottom right is a leaf design, and below all the aforementioned wording and designs is the wording ONLY FROM NATURE.. all within a square.
(2) If color is a feature of the mark, applicant must submit a statement (a) listing all the colors that are claimed as a feature of the mark and (b) describing all the literal and design elements in the mark that specifies where each color appears in those elements. 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §807.07(a)-(a)(ii). Generic color names must be used to describe the colors in the mark, e.g., red, yellow, blue. TMEP §807.07(a)(i)-(ii). If black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark, applicant must so specify in the description. See TMEP §807.07(d). The following color claim and description are suggested, if accurate:
Color claim: “The colors GREEN, WHITE, and RED are claimed as a feature of the mark.”
Description: “The mark consists of the wording GIDA INTERNATIONAL GROUP ONLY FROM NATURE.. represented in stylized font in the color white with the word GIDA on top and the wording INTERNATIONAL GROUP all within a green oval outlined in white, to the bottom left of the green oval outlined in white is a green crescent, to the top right of the green oval outlined in white is a red crescent, to the bottom right is a green leaf design, and below this is the wording ONLY FROM NATURE.. in the color green, all within a white square.”
See TMEP §807.07(b).
ENGLISH TRANSLATION REQUIRED
The following English translation is suggested:
The English translation of “GIDA” in the mark is “FOOD”.
TMEP §809.03. See attached translation evidence.
Applicant must disclaim the wording “INTERNATIONAL GROUP” because it merely designates the legal character or family business structure of an entity and does not indicate the source of applicant’s goods and/or services. See 15 U.S.C. §§1051-1053, 1127; In re Piano Factory Grp., Inc., 85 USPQ2d 1522, 1526 (TTAB 2006); In re Patent & Trademark Servs., Inc., 49 USPQ2d 1537, 1539-40 (TTAB 1998); TMEP §1213.03(d).
Business type designations and abbreviations such as “Corporation,” “Inc.,” “Company,” “LLC,” and “Ltd.” or family business designations such as “& Sons” or “Bros.” must be disclaimed, because they merely indicate applicant’s business type or structure and generally have no source-indicating capacity. TMEP §1213.03(d); see, e.g., Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U.S. 598, 602-03 (1888); In re Piano Factory Grp., Inc., 85 USPQ2d at 1526; In re Patent & Trademark Servs., Inc., 49 USPQ2d at 1539-40.
The English translation of Turkish word “GIDA” in the mark is “FOOD”.
The attached evidence from The American Heritage® Dictionary of the English Language shows FOOD means “1. Material, especially carbohydrates, fats, and proteins, that an organism uses for energy, growth, and maintaining the processes of life. Plants, algae, and some bacteria make their own food through photosynthesis, while animals and most other organisms obtain food by consuming other organisms or organic matter,” INTERNATIONAL means “Of, relating to, or involving two or more nations,” and GROUP means “A collection of individuals who have regular contact and frequent interaction, mutual influence, common feeling or camaraderie, and who work together to achieve a common set of goals.” Thus, the wording merely describes applicant’s goods and/or services because they describes the applicant’s goods which are food and the entity and international scope of the applicant’s business.
The examining attorney has attached some third party registrations that show the disclaimer of the wording INTERNATIONAL GROUP.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “GIDA INTERNATIONAL GROUP” 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.
SUGGEST HIRING TRADEMARK COUNSEL
Because of the legal technicalities and strict deadlines of the trademark application process, applicant is encouraged to hire a private attorney who specializes in trademark matters to assist in this process. The assigned trademark examining attorney can provide only limited assistance explaining the content of an Office action and the application process. USPTO staff cannot provide legal advice or statements about an applicant’s legal rights. TMEP §§705.02, 709.06. See Hiring a U.S.-licensed trademark attorney for more information.
How to respond. Click to file a response to this nonfinal Office action.
/Warren L. Olandria/
Trademark Examining Attorney
U.S. Patent & Trademark Office
Law Office 112
Phone: 571-272-9718
Warren.Olandria@uspto.gov
RESPONSE GUIDANCE