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:  December 23, 2021

 

The referenced application has been reviewed by the assigned trademark examining attorney.  The 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.

 

 

No Conflicting Marks Noted

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.  However, the applicant must respond to the following issues within the prescribed six-month response period in order to avoid abandonment.

 

SUMMARY OF ISSUES:

• Disclaimer Requirement
• Section 2(f) Acquired Distinctiveness Claim, in Part, Suggested (as to “UNITED STATES POSTAL INSPECTION SERVICE”)
• Reclassification of Services Currently in International Class 42 Required
• Amended Description of the Mark Requirement

 

 

Disclaimer Requirement

The applicant must disclaim the wording “POSTAL INSPECTOR” and “UNITED STATES POSTAL INSPECTION SERVICE” and “U S” and “FEDERAL AGENT” and “EST. 1775” because it is merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of the applicant’s goods and/or services.  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). 

 

The attached evidence from online dictionaries and excerpts from websites shows that the applicant’s services literally consist of providing investigations and protection of U.S. postal employees, real and personal property including inspection of mail and packages for illegal and dangerous goods conducted by postal inspectors. In addition, by definition, the postal inspectors are federal agents that represent and serve the United States Postal Service.  Finally, the term “EST.” is simply the widely recognized abbreviation for “established” and is “used with a date after the name of a business or other organization to show when it was started.”  In this case, based on the attached excerpt, the United States Postal Inspection Service was established in 1775. See the representative web excerpts and online dictionary definitions for the terms “US,” “postal,” “inspector,” “inspection,” and “federal agent” attached.  Thus, the wording merely describes the applicant’s services because the services consist of conducting “postal inspection services” for the United States Postal Service performed by “postal inspectors” that are classified as “federal agents,” and the “United States Postal Inspection Service” was established in 1775.

 

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

 

No claim is made to the exclusive right to use “POSTAL INSPECTOR” and “UNITED STATES POSTAL INSPECTION SERVICE” and “U S” and “FEDERAL AGENT” and “EST. 1775” apart from the mark as shown. 

 

A “disclaimer” is a statement in the application record that an applicant does not claim exclusive rights to an unregistrable component of the mark.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965); TMEP §1213.  A disclaimer does not physically remove the disclaimed matter from the mark or otherwise affect the appearance of the mark.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d at 979, 144 USPQ2d at 433; TMEP §1213.

 

If applicant does not provide the required disclaimer, the USPTO may refuse to register the entire mark.  See In re Stereotaxis Inc., 429 F.3d 1039, 1041, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005); TMEP §1213.01(b).

 

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

 

Section 2(f) Acquired Distinctiveness Claim, in Part, Suggested (as to “UNITED STATES POSTAL INSPECTION SERVICE”)

The applicant may amend the application to assert a claim of acquired distinctiveness, in part, as to the wording “UNITED STATES POSTAL INSPECTION SERVICE” under Trademark Act Section 2(f) based on ownership of active U.S. Registration Nos. 2763450 and 3757624.  See 15 U.S.C. §1052(f); TMEP §§1212.04 et seq.  To do so, the applicant must request that the application be amended to assert a claim of acquired distinctiveness, in part, under Section 2(f) and submit the following statement, if accurate:

 

The wording “UNITED STATES POSTAL INSPECTION SERVICE” in the mark has become distinctive of the services as evidenced by the ownership of active U.S. Registration Nos. 2763450 and 3757624 on the Principal Register for the same mark for sufficiently similar services.

 

TMEP §1212.04(e); see 37 C.F.R. §2.41(a)(1).

 

            NOTE:  If the applicant submits a claim of acquired distinctiveness as to the wording “UNITED STATES POSTAL INSPECTION SERVICE”, the applicant should amend the disclaimer from the required language above to the following:

 

No claim is made to the exclusive right to use “POSTAL INSPECTOR” and “U S” and “FEDERAL AGENT” and “EST. 1775” apart from the mark as shown.

 

Reclassification of Services Currently in International Class 42 Required

The services presently classified in International Class 42 are classified incorrectly.  Accordingly, the applicant must amend the application to classify the goods and/or services in International Class 45.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).

 

Notably, classification of goods and services is a purely administrative matter within the sole discretion of the USPTO.  See In re Faucher Indus. Inc., 107 USPQ2d 1355, 1357 (TTAB 2013) (quoting In re Tee-Pak, Inc., 164 USPQ 88, 89 (TTAB 1969)).

 

Amended Description of the Mark Requirement

The 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 a badge design containing stylized leaves and with a stylized eagle with outstretched wings on the top holding a banner containing the wording “POSTAL INSPECTOR” over a circular design containing the wording “UNITED STATES POSTAL INSPECTION SERVICE” and two five pointed stars on the outside of the design and a stylized head of an eagle inside of a five-pointed star design at the center of the design, and the acronym “U S” appearing with circular design in the middle.  The wording “FEDERAL AGENT” appears inside a banner below the circular design.  The wording “EST. 1775” separated by a horse and rider design appears at the bottom of the design.

 

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

 

If the applicant has any questions or needs assistance with the present application, please telephone the assigned examining attorney.

 

 

/Jeffery C. Coward/

Trademark Examining Attorney

Law Office 106

Phone: (571) 272-9148

E-mail: jeffery.coward@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 December 23, 2021 for

U.S. Trademark Application Serial No. 90800967

 

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.