UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

 

 

 

FIRST 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: 11/4/2011

 

 

TEAS PLUS APPLICANTS MUST SUBMIT DOCUMENTS ELECTRONICALLY OR SUBMIT FEE:  Applicants who filed their application online using the reduced-fee TEAS Plus application must continue to submit certain documents online using TEAS, including responses to Office actions.  See 37 C.F.R. §2.23(a)(1).  For a complete list of these documents, see TMEP §819.02(b).  In addition, such applicants must accept correspondence from the Office via e-mail throughout the examination process and must maintain a valid e-mail address.  37 C.F.R. §2.23(a)(2); TMEP §§819, 819.02(a).  TEAS Plus applicants who do not meet these requirements must submit an additional fee of $50 per international class of goods and/or services.  37 C.F.R. §2.6(a)(1)(iv); TMEP §819.04.  In appropriate situations and where all issues can be resolved by amendment, responding by telephone to authorize an examiner’s amendment will not incur this additional fee.

 

 

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

 

 

 

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.

 

 

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).

 

The application may not proceed to registration until the applicant responds to the following.

 

 

1.         Description Of Mark

The description of the mark uses wordy language that does not concisely describe the applied-for mark.  Applications for marks not in standard characters must include an accurate and concise description that identifies all literal elements as well as any design elements in the mark.  See 37 C.F.R. §2.37; TMEP §808.02. 

 

Therefore, applicant must provide a more detailed description of the applied-for mark.  The following is suggested:

 

The mark consists of the stylized wording “KOKORO & MOI” with the letter Os in darker, thicker font than the other lettering in the mark.

 

 

2.         Withdrawal Of Disclaimer

The applicant disclaimed the entire applied-for mark.  However, an entire mark may not be disclaimed.  TMEP §1213.06; see 15 U.S.C. §1056(a); In re Dena Corp. v. Belvedere Int’l Inc., 950 F.2d 1555, 1560, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991); In re Carlson, 91 USPQ2d 1198, 1203 (TTAB 2009); In re JT Tobacconists, 59 USPQ2d 1080, 1081 n.1 (TTAB 2001).  If the applied-for mark is not registrable as a whole, a disclaimer will not make it registrable.  TMEP §1213.06.

 

In the present case, however, the applied-for mark is registrable without a disclaimer.  Therefore, applicant must withdraw the disclaimer.

 

 

3.         English Translation Required

Applicant must submit an English translation of the mark.  37 C.F.R. §2.32(a)(9); TMEP §809.   See the attached translation information provided by the Translation Department of the Trademark Office.

 

The following translation statement is suggested: 

 

The English translation of “KOKORO & MOI” in the mark is “HEART & ME”. 

 

 

 

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

 

/Andrea Koyner Nadelman/

Andrea Koyner Nadelman

Trademark Attorney

Law Office 110

(571) 272-9370

andrea.nadelman@uspto.gov

 

 

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.

From: Koytcheff, John
Sent: Thursday, November 03, 2011 3:58 PM
To: Nadelman, Andrea K
Subject: 85368873 RE: MOI and KOKORO and translation request - Confirmation of receipt and assignment to staff

Aide-Mémoire

1. This is to formally confirm that MOI translates as ME from the FRENCH.
2. MOI a.k.a. MOY translates as MINE from Bulgarian [plural ‘mine’ is MOI, singular ‘mine’ is MOY], and few other Slavonic languages, [Slavo-]Macedonian, Croatian [moj = my, mine; Pronounced “moy’], Russian, Serbian, etc.

3. MOI is only colloquially used in FINNSIH (SUOMI) [It’s not in dictonaries, not in the written language], is equivalent to  Hi! in FINNISH (SUOMI) language.

//JMK//

There is not such a word as KOKORO in  any of the European languages used in Europe, the Americas, AUS&NZ, and the so-called ‘eurasian landmass’, nor is there such a word in  any of the principal  non-European languages of Europe: Finnish, Estonian, Hungarian, and Turkish.  

[OPTIONAL ---KOKORO – as CHISATO Morohashi already communicated – ‘heart’ in Japanese:


http://en.wiktionary.org/wiki/kokoro

---END OPTIONAL].

John M. Koytcheff, M.Sc. (Civil & Water Engrg.);
WHO  Postgrad. Fellow (Environmental Engrg.);
USNWC/USNC&SC Graduate

USPTO Translator from GERMAN (first main language)
USPTO Translator from Russian (second main language)
The USPTO Translator from Bulgarian (main language)
The USPTO Translator from Dutch
The USPTO Translator from Norwegian
The USPTO Translator from Danish
The USPTO Translator from Swedish
USPTO Translator from Polish
The USPTO Translator from Croatian
US Department of Commerce/USPTO/STIC
Ph: 571 272 3495.

 

From: Nadelman, Andrea K
Sent: Thursday, November 03, 2011 2:54 PM
To: STIC-Translations; Koytcheff, John
Subject: RE: translation request - Confirmation of receipt and assignment to staff

 

Thanks.

 

From: Morohashi, Chisato On Behalf Of STIC-Translations
Sent: Thursday, November 03, 2011 2:49 PM
To: Koytcheff, John
Cc: Nadelman, Andrea K
Subject: FW: translation request - Confirmation of receipt and assignment to staff

KOKORO means heart in Japanese.