UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

 

ISSUE/MAILING DATE: 6/1/2011

 

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.

 

Search Results / No Conflicting Marks

 

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

Telephone Response Suggested

 

Applicant is highly encouraged to telephone the assigned trademark examining attorney to resolve the issues raised in this Office action.

 

Summary of Issues that Applicant Must Address

 

The applicant must address the following issues:

 

(1)   Mark is Merely Descriptive – Refusal to Register under Section 2(e)(1)

(2)   *Advisory – Amend to Supplemental Register to Overcome 2(e)(1) Refusal

(3)   Identification and Classification of Goods

(4)   *Multi-class Advisory – Requirements for a Multiple Class Application

(5)   Disclaimer of “PADDLE COMPANY” on Supplemental Register or under Section 2(f) as Generic

(6)   Significance of “MOANA”

(7)   Translation of “MOANA”

 

Mark is Merely Descriptive – Refusal to Register under Section 2(e)(1)

 

Registration is refused because the applied-for mark merely describes features of applicant’s goods.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

 

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods and/or services.  TMEP §1209.01(b); see In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005); In re Gyulay, 820 F.2d 1216, 1217-18, 3 USPQ2d 1009, 1010 (Fed. Cir. 1987). 

 

 “A mark may be merely descriptive even if it does not describe the ‘full scope and extent’ of the applicant’s goods or services.”  In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004) (citing In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1346, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001)); TMEP §1209.01(b).  It is enough if the term describes only one significant function, attribute or property.  In re Oppedahl, 373 F.3d at 1173, 71 USPQ2d at 1371; TMEP §1209.01(b).

 

The applicant has applied to register MOANA PADDLE COMPANY for “Kayaks; Canoes; Stand-up paddles for recreational watercrafts.” 

 

The term “MOANA” is Hawaiian or Tahitian for “ocean.”  See attached dictionary evidence and two registrations that contain translations.  The foreign equivalent of a merely descriptive English word or term is also merely descriptive.  In re N. Paper Mills, 64 F.2d 998, 998, 17 USPQ 492, 493 (C.C.P.A. 1933).  Under the doctrine of foreign equivalents, marks with foreign words from modern languages are translated into English to determine descriptiveness.  TMEP §1209.03(g); see Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1377, 73 USPQ2d 1689, 1696 (Fed. Cir. 2005).

 

The doctrine is applied when it is likely that an ordinary American purchaser would “stop and translate” the foreign term into its English equivalent.  Palm Bay, 396 F.3d at 1377, 73 USPQ2d at 1696; cf. TMEP §1207.01(b)(vi)(A).  The ordinary American purchaser refers to “all American purchasers, including those proficient in a non-English language who would ordinarily be expected to translate words into English.”  In re Spirits Int’l, N.V., 563 F.3d 1347, 1352, 90 USPQ2d 1489, 1492 (Fed. Cir. 2009); see In re Thomas, 79 USPQ2d 1021, 1024 (TTAB 2006) (citing J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition §23:26 (4th ed. 2006), which states “[t]he test is whether, to those American buyers familiar with the foreign language, the word would denote its English equivalent.”).

 

Generally, the doctrine is applied when the English translation is a literal and exact translation of the foreign wording.  See In re Oriental Daily News, Inc., 230 USPQ 637, 638 (TTAB 1986) (holding Chinese characters that mean ORIENTAL DAILY NEWS merely descriptive of newspapers); In re Zazzara, 156 USPQ 348, 348 (TTAB 1967) (holding PIZZA FRITTE, the Italian equivalent of “fried buns,” incapable for fried dough); TMEP §1209.03(g).

 

The applicant’s goods include and feature “paddles.”

 

Business entity designations such as “Corporation,” “Inc.,” “Company,” and “Ltd.” must be disclaimed because they merely indicate applicant’s entity type and generally do not function to indicate the source of goods or services.  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 Patent & Trademark Servs., Inc., 49 USPQ2d 1537, 1539-40 (TTAB 1998); In re The Paint Prods. Co., 8 USPQ2d 1863, 1866 (TTAB 1988).  This analogy is also relevant for 2(e)(1) descriptiveness analysis, because entity types are viewed as generic.

 

“Ocean paddles” and “ocean paddling” are a type of paddle/sport.  See website evidence.  As such a mark that would immediately translate as “ocean paddle company” would be high descriptive as used in connection with paddles used for ocean paddling.

 

Accordingly, the examining attorney has refused registration on the Principal Register under Section 2(e)(1).

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

Amendment to Supplemental Register Suggested – Section 1(a) or 44 Application

 

The applied-for mark has been refused registration on the Principal Register.  Applicant may respond to the refusal by submitting evidence and arguments in support of registration and/or by amending the application to seek registration on the Supplemental Register.  See 15 U.S.C. §1091; 37 C.F.R. §§2.47, 2.75(a); TMEP §§801.02(b), 816.  Amending to the Supplemental Register does not preclude applicant from submitting evidence and arguments against the refusal(s).  TMEP §816.04.

 

Benefits of the Supplemental Register

 

Although registration on the Supplemental Register does not afford all the benefits of registration on the Principal Register, it does provide the following advantages:

                               

• The registrant may use the registration symbol ®;
• The registration is protected against registration of a confusingly similar mark under Trademark Act Section 2(d);
• The registrant may bring suit for infringement in federal court; and
• The registration may serve as the basis for a filing in a foreign country under the Paris Convention and other international agreements.

 

See 15 U.S.C. §§1052(d), 1091, 1094; TMEP §815.

 

Identification of Goods – Clarification Needed

 

Certain wording in the identification of goods is indefinite and must be clarified.  See TMEP §1402.01.  Applicant must specify the common commercial or generic name for the goods.  If there is no common commercial or generic name, applicant must describe the product and intended consumer as well as its main purpose and intended uses. 

 

The wording “Stand-up paddles for recreational watercrafts” is not clear because this wording could encompass “canoe paddles, kayak paddles” in Class 12 and also “stand-up surf paddles” in Class 28.

 

Applicant may adopt one (1) or more of the following identification, if accurate: 

 

            Kayaks; Canoes; Stand-up paddles for recreational watercrafts, namely, kayak paddles and canoe paddles, in Class 12;

 

            Stand-up surf paddles, in Class 28. 

 

Identifications of goods can be amended only to clarify or limit the goods; adding to or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.  Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.

 

For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.uspto.gov/netahtml/tidm.html.  See TMEP §1402.04.

 

See attached Id listings re: “paddles” for acceptable identifications, level of specificity required and proper classification, as needed.

 

Requirements for a Combined Application Based on Use – 1(a)

 

If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the requirements below for those goods and/or services based on actual use in commerce under Trademark Act Section 1(a):

 

(1)        Applicant must list the goods/services by international class;

 

(2)        Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov); and

 

(3)        For each additional international class of goods and/or services, applicant must submit:

 

(a)        Dates of first use of the mark anywhere and dates of first use of the mark in commerce, or a statement that the dates of use in the initial application apply to that class.  The dates of use, both anywhere and in commerce, must be at least as early as the filing date of the application.;

 

(b)        One specimen showing the mark in use in commerce for each class of goods and/or services.  The specimen must have been in use in commerce at least as early as the filing date of the application.  If a single specimen supports multiple classes, applicant should indicate which classes the specimen supports rather than providing multiple copies of the same specimen.  Examples of specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale.  See TMEP §§904.03 et seq.  Examples of specimens for services are signs, photographs, brochures, website printouts or advertisements that show the mark used in the actual sale or advertising of the services.  See TMEP §§1301.04 et seq.;

 

(c)        The following statement:  “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.”; and

 

(d)        Verification of the statements in 3(a) and 3(c) (above) in an affidavit or signed declaration under 37 C.F.R. §2.20.  Verification is not required where (1) the dates of use for the added class are stated to be the same as the dates of use specified in the initial application, and (2) the original specimens are acceptable for the added class(es).

 

See 15 U.S.C. §§1051(a), 1112, 1127; 37 C.F.R. §§2.32(a)(5), 2.34(a)(1), 2.56(a), 2.71(c), 2.86(a), 2.193(e)(1); TMEP §§1403.01, 1403.02(c).

 

With respect to the requirement in 3(b) above for a specimen for each class of goods and/or services, please note that the specimen(s) of record is acceptable for International Class(es) 12 and/or 28 only.  It is noted that the Applicant’s specimen is a “paddle” that may be used as a Class 12 (canoe paddle) or Class 28 (surf paddle) and the Applicant would know if it needed to add a specimen, if the paddle shown was only of the type used in one of those classes.  Applicant must submit additional specimens if other classes are added to the application.

 

Note:  The applicant has paid for one (1) class to date.

 

Disclaimer of Generic Matter on Supplemental Register or Under 2(f)

 

If applicant amends the application to seek registration on the Principal Register under Trademark Act Section 2(f) or on the Supplemental Register, applicant must disclaim “PADDLE COMPANY” because such wording appears to be generic in the context of applicant’s goods and/or services.  See 15 U.S.C. §1056(a);  In re Wella Corp., 565 F.2d  143, 196 USPQ 7 (C.C.P.A. 1977); In re Creative Goldsmiths of Wash., Inc., 229 USPQ 766 (TTAB 1986); TMEP §1213.03(b).

 

The applicant is a company that sells paddles as its main sales item.  It is a paddle company.  As such, this wording is generic.

 

A term that is generic for a type of goods has been held generic for the service of selling primarily those goods.  See In re Tires, Tires, Tires, Inc., 94 USPQ2d 1153, (TTAB 2009) (holding TIRES TIRES TIRES generic for retail tire store services); In re A La Vieille Russie, Inc., 60 USPQ2d 1895 (TTAB 2001) (holding RUSSIANART generic for art dealership services in the field of Russian art); In re Log Cabin Homes Ltd., 52 USPQ2d 1206 (TTAB 1999) (holding LOG CABIN HOMES generic for architectural design of buildings and retail outlets featuring kits for constructing buildings, especially houses); In re Bonni Keller Collections Ltd., 6 USPQ2d 1224 (TTAB 1987) (holding LA LINGERIE generic for retail store services featuring clothing); In re Wickerware, Inc., 227 USPQ 970 (TTAB 1985) (holding WICKERWARE generic for mail order and distributorship services featuring products made of wicker); In re Half Price Books, Records, Magazines, Inc., 225 USPQ 219 (TTAB 1984) (holding HALF PRICE BOOKS RECORDS MAGAZINES generic for retail book and record store services); TMEP §1209.03(r).

 

The following is the accepted format for a disclaimer:

 

No claim is made to the exclusive right to use “PADDLE COMPANY” apart from the mark as shown.

 

TMEP §1213.08(a)(i).

 

A “disclaimer” is a statement in the record that an applicant does not claim exclusive rights to an unregistrable component of a mark; it does not affect the appearance of the mark.  TMEP §1213.  An unregistrable component can include wording or designs that are merely descriptive or generic, deceptively misdescriptive, or primarily geographically descriptive of an applicant’s goods and/or services.  15 U.S.C. §1052(e); see TMEP §§1213, 1213.03.

 

The Office can require an applicant to disclaim an unregistrable component of a mark.  15 U.S.C. §1056(a).  Failure to comply with a disclaimer requirement can result in a refusal to register the entire mark.  TMEP §1213.01(b).

 

A disclaimer does not physically remove the disclaimed matter from the mark, but rather is a written statement that applicant does not claim exclusive rights to the disclaimed wording and/or design separate and apart from the mark as shown in the drawing.  TMEP §§1213, 1213.10.

 

Significance of the Mark – Explanation of Mark’s Significance Required

 

Applicant must explain whether “MOANA” has any meaning or significance in the industry in which the goods and/or services are manufactured/provided, or if such wording is a “term of art” within applicant’s industry.  Applicant must also explain whether this wording identifies a geographic place.  See 37 C.F.R. §2.61(b); TMEP §814.

 

Further, applicant must provide additional information about this wording to enable proper examination of the application.

 

Failure to respond to this request for information can be grounds for refusing registration.  See In re DTI P’ship LLP, 67 USPQ2d 1699, 1701 (TTAB 2003); TMEP §814.

 

Translation of Foreign Wording Required

 

Applicant must submit an English translation of all foreign wording in the mark.  37 C.F.R. §2.32(a)(9); see TMEP §809.  In the present case, the wording “MOANA” requires translation.

 

The following translation statement is suggested: 

 

            The English translation of “MOANA” in the mark is “__________” [enter the translation e.g. “ocean”]. 

 

TMEP §809.03.

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

/Gina M. Fink/

Trademark Examining Attorney

Law Office 109

Phone: (571) 272-9275

gina.fink@uspto.gov

Law Office 109 Fax: (571) 273-9109

 

 

TO RESPOND TO THIS LETTER:  Go to http://www.uspto.gov/trademarks/teas/response_forms.jsp.  Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

 

All informal e-mail communications relevant to this application will be placed in the official application record.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.uspto.gov/.  Please keep a copy of the complete TARR screen.  If TARR shows no change for more than six months, call 1-800-786-9199.  For more information on checking status, see http://www.uspto.gov/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.uspto.gov/teas/eTEASpageE.htm.