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.  A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.

 

ISSUE/MAILING DATE: 3/15/2018

 

This Office action is supplemental to and supersedes the previous Office action issued on February 10, 2018 in connection with this application.  Based on information and/or documentation in applicant’s response, the trademark examining attorney now issues the following new refusal:  Section 2(a) False Connection.  See TMEP §§706, 711.02. 

 

In a previous Office action dated February 10, 2018, the examining attorney required the applicant to satisfy the following requirement:  properly amend and classify the identification of goods.

 

Based on applicant’s response, the trademark examining attorney notes that the following requirement has been satisfied:  definite amended identification provided.  See TMEP §713.02. 

 

The following is a SUMMARY OF ISSUES that applicant must address:

 

            •  NEW ISSUE:  Section 2(a) False Connection Refusal

 

Applicant must respond to all issues raised in this Office action, within six (6) months of the date of issuance of this Office action.  37 C.F.R. §2.62(a); see TMEP §711.02.  If applicant does not respond within this time limit, the application will be abandoned.  37 C.F.R. §2.65(a).

 

Section 2(a) False Connection Refusal-NEW ISSUE

 

Registration is refused because the applied-for mark consists of or includes matter which may falsely suggest a connection with YELLOWSTONE NATIONAL PARK.  Trademark Act Section 2(a), 15 U.S.C. §1052(a).  Although YELLOWSTONE NATIONAL PARK is not connected with the goods provided by applicant under the applied-for mark, YELLOWSTONE NATIONAL PARK is so well-known that consumers would presume a connection.  See id.

 

Under Trademark Act Section 2(a), the registration of a mark that “consists of or comprises matter that may falsely suggest a connection with persons, institutions, beliefs, or national symbols” is prohibited.  In re Pedersen, 109 USPQ2d 1185, 1188 (TTAB 2013).  To establish that an applied-for mark falsely suggests a connection with a person or an institution, the following is required:

 

(1)       The mark sought to be registered is the same as, or a close approximation of, the name or identity previously used by another person or institution.

 

(2)       The mark would be recognized as such, in that it points uniquely and unmistakably to that person or institution.

 

(3)       The person or institution identified in the mark is not connected with the goods sold or services performed by applicant under the mark.

 

(4)       The fame or reputation of the named person or institution is of such a nature that a connection with such person or institution would be presumed when applicant’s mark is used on its goods and/or services.

 

In re Pedersen, 109 USPQ2d at 1188-89; In re Jackson Int’l Trading Co., 103 USPQ2d 1417, 1419 (TTAB 2012); TMEP §1203.03(c)(i); see also Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imps. Co., 703 F.2d 1372, 1375-77, 217 USPQ 505, 508-10 (Fed. Cir. 1983) (providing foundational principles for the current four-part test used to determine the existence of a false connection).

 

Due to the renown of the institution named in the mark, and the fact that there is no information in the application record regarding a connection with applicant, applicant must specify whether the institution named in the mark has any connection with applicant’s goods, and if so, must describe the nature and extent of that connection.  See 37 C.F.R. §2.61(b); TMEP §1203.03(c)(i). 

 

Dictionary definitions alone may be competent to demonstrate that the mark sought to be registered is the same as, or a close approximation of, the named person or institution.  See, e.g., In re Pedersen, 109 USPQ2d 1185, 1189-90 (TTAB 2013) (relying on dictionary definitions to find that “Lakota” is “the same as or a close approximation of the name or identity previously used by another,” the Lakota people); In re Cotter & Co., 228 USPQ 202, 204-05 (TTAB 1985) (relying on dictionary definitions to find that “West Point” has “come to be solely associated with and points uniquely to the United States Military Academy”).

 

Please see the attached Internet dictionary definitions and evidence which illustrates the meaning of the term “YELLOWSTONE” in that it describes and immediately references YELLOWSTONE NATIONAL PARK.”

 

https://www.collinsdictionary.com/dictionary/english/yellowstone

 

https://en.wikipedia.org/wiki/Yellowstone

 

https://en.oxforddictionaries.com/definition/us/Yellowstone_National_Park

 

https://www.collinsdictionary.com/dictionary/english/yellowstone-national-park

 

http://www.dictionary.com/browse/yellowstone-national-park

 

https://www.nps.gov/yell/index.htm

 

The fact that applicant did not intend to adopt the name of, or trade upon the goodwill of, the named person or institution does not obviate a false connection refusal.  Trademark Act Section 2(a) does not require such intent.  TMEP §1203.03(c)(i); see, e.g., S & L Acquisition Co. v. Helene Arpels, Inc., 9 USPQ2d 1221, 1224 (TTAB 1987); Consol. Natural Gas v. CNG Fuel Sys., Ltd., 228 USPQ 752, 754 (TTAB 1985).  However, evidence of such intent is highly probative that the public will make the intended false connection.  Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imps. Co., 703 F.2d 1372, 1377, 217 USPQ 505, 509 (Fed. Cir. 1983); TMEP §1203.03(c)(i).

 

The U.S. government is a “person” within the meaning of Section 2(a).  15 U.S.C. §1127; FBI v. Societe: “M. Bril & Co.”, 172 USPQ 310, 313 (TTAB 1971); TMEP §1203.03(a)(i).  Accordingly, the common names of, and acronyms for, U.S. government agencies and instrumentalities are considered persons.  TMEP §1203.03(a)(i); see In re Peter S. Herrick P.A., 91 USPQ2d 1505, 1506 (TTAB 2009); NASA v. Record Chem. Co., 185 USPQ 563, 566 (TTAB 1975).  In addition to qualifying as a “person,” U.S. government agencies and instrumentalities, as identified by their common names and acronyms, are also “institutions” within the meaning of Section 2(a).  TMEP §1203.03(a)(ii); see In re Peter S. Herrick P.A., 91 USPQ2d at 1506; In re Cotter & Co., 228 USPQ 202, 204 (TTAB 1985).

 

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

 

Foreign Pro Se Applicant May Wish to Seek Trademark Counsel

 

Because of the legal technicalities and strict deadlines involved in the USPTO application process, applicant may wish to hire a qualified U.S. attorney specializing in trademark matters to represent applicant in this process and provide legal advice.  Although the undersigned trademark examining attorney is permitted to help an applicant understand the contents of an Office action as well as the application process in general, no USPTO attorney or staff is permitted to give an applicant legal advice or statements about an applicant’s legal rights.  TMEP §§705.02, 709.06.  For attorney referral information, applicant may consult the American Bar Association’s Consumers’ Guide to Legal Help or an online directory of legal professionals, such as FindLaw®.  The USPTO, however, may not assist an applicant in the selection of a private attorney.  37 C.F.R. §2.11.

 

Please note that foreign attorneys, other than authorized Canadian attorneys, are not permitted to represent applicants before the USPTO (e.g., file written communications, authorize an amendment to an application, or submit legal arguments in response to a requirement or refusal).  See 37 C.F.R. §§2.17(e), 11.14(c), (e); TMEP §602.03-.03(c). 

 

The only attorneys who may practice before the USPTO in trademark matters are as follows:

 

(1)       Attorneys in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other U.S. commonwealths or U.S. territories; and

 

(2)       Canadian agents/attorneys who represent applicants located in Canada and (a) are registered with the USPTO and in good standing as patent agents or (b) have been granted reciprocal recognition by the USPTO.

 

See 37 C.F.R. §§2.17(a), (e), 11.1, 11.14(a), (c); TMEP §602.

 

Response Guidelines

 

For this application to proceed further, applicant must explicitly address each refusal and/or requirement raised in this Office action.  If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register.  Applicant may also have other options specified in this Office action for responding to a refusal and should consider those options carefully.  To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements.  For more information and general tips on responding to USPTO Office actions, response options, and how to file a response online, see “Responding to Office Actions” on the USPTO’s website.

 

If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end and the trademark will fail to register.  See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a); TMEP §§718.01, 718.02.  Additionally, the USPTO will not refund the application filing fee, which is a required processing fee.  See 37 C.F.R. §§2.6(a)(1)(i)-(iv), 2.209(a); TMEP §405.04.

 

When an application has abandoned for failure to respond to an Office action, an applicant may timely file a petition to revive the application, which, if granted, would allow the application to return to active status.  See 37 C.F.R. §2.66; TMEP §1714.  The petition must be filed within two months of the date of issuance of the notice of abandonment and may be filed online via the Trademark Electronic Application System (TEAS) with a $100 fee.  See 37 C.F.R. §§2.6(a)(15)(ii), 2.66(a)(1), (b)(1).

 

TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application.  See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820.  TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.  However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.  

 

 

 

/Jay K Flowers/

United States Patent and Trademark Office

Trademark Examining Attorney

Law Office 112

571.272.8202

jay.flowers@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 the Trademark Electronic Application System (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 the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.uspto.gov/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or 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/trademarks/teas/correspondence.jsp.