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: 6/14/2010

 

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 for References

 

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).

 

Section 2(a) Refusal

 

Registration is refused because the applied-for mark consists of or includes matter which may disparage or bring into contempt or disrepute persons, institutions, beliefs or national symbols.  Trademark Act Section 2(a), 15 U.S.C. §1052(a); see In re Squaw Valley Dev. Co., 80 USPQ2d 1264, 1267-79 (TTAB 2006); Harjo v. Pro-Football, Inc., 50 USPQ2d 1705, 1740-48 (TTAB 1999), rev’d, 284 F. Supp. 2d 96, 125, 68 USPQ2d 1225, 1248 (D.D.C. 2003) (finding “no error in the TTAB’s articulation of [the Section 2(a)] test for disparagement”), remanded on other grounds, 415 F.3d 44, 75 USPQ2d 1525 (D.C. Cir. 2005), and aff’d, 565 F.3d 880, 90 USPQ2d 1593 (D.C. Cir. 2009), cert. denied, 130 S. Ct. 631 (2009); TMEP §§1203.03, 1203.03(c).

 

The intent of an applicant to disparage the referenced group is not necessary to find that the mark does, in fact, disparage that group.  In re Lebanese Arak Corp., 94 USPQ2d 1215, 1220 (TTAB 2010); see also In re Anti-Communist World Freedom Cong., Inc., 161 USPQ 304, 305 (TTAB 1969) (finding applicant’s intent to disparage the referenced group immaterial to the disparagement determination).

 

The attached evidence shows the likely meaning of “NIGGA” to be “(ethnic slur) extremely offensive name for a Black person” (see attached dictionary definition from dictionary.com);  This refers to black persons in a disparaging manner because it is an ethnic slur.

 

Registration is refused pursuant to Section 2(a) of the Trademark Act. A mark that is deemed scandalous under Section 2(a) is not registrable on either the Principal or Supplemental Register.  TMEP §1203.01.  Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

Requirements

 

Applicant must respond to the requirement(s) set forth below.

 

1. Declaration

 

The application was not signed and verified, both of which are application requirements.  See 15 U.S.C. §§1051(b), 1126(d)-(e); 37 C.F.R. §§2.33(a), (b)(2), 2.34(a)(2), (a)(3)(i), (a)(4)(ii).  Therefore, applicant must verify the statements specified further below in a signed affidavit or declaration under 37 C.F.R. §2.20.  See 15 U.S.C. §§1051(b)(3), 1126(d)-(e); 37 C.F.R. §§2.33(a), (b)(2), (c), 2.193(e)(1); TMEP §§804.02, 806.01(b)-(d).

 

If applicant responds to this Office action online via the Trademark Electronic Application System (TEAS), applicant may satisfy this requirement by answering “yes” to the TEAS response form wizard question relating to submitting a “signed declaration,” and following the instructions within the form for signing.  See 37 C.F.R. §§2.33(a), (b)(2), (c), 2.193(a), (c)-(d), (e)(1); TMEP §§611.01(c), 804.01(b). 

 

If applicant responds to this Office action on paper, via regular mail, applicant may satisfy this requirement by providing the following statements and declaration at the end of the response, personally signed and dated by a person authorized under 37 C.F.R. §2.193(e)(1).  See 37 C.F.R. §§2.20, 2.33(a), (b)(2), (c), 2.193(a), (d); TMEP §§611.01(b), 804.01(b).

 

STATEMENTS:  The undersigned is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be entitled to use the mark in commerce; applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods and/or services listed in the application as of the application filing date; the facts set forth in the application are true and accurate; and to the best of the undersigned’s knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive.

 

DECLARATION:  The undersigned being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements and the like may jeopardize the validity of the application or document or any registration resulting therefrom, declares that all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.

 

_____________________________

(Signature)

 

_____________________________

(Print or Type Name and Position)

 

_____________________________

(Date)

 

2. Disclaimer

 

Applicant must disclaim the descriptive wording “COMPANY” apart from the mark as shown because it merely describes the applicant’s entity.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a). 

 

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).

 

The computerized printing format for the Office’s Trademark Official Gazette requires a standardized format for a disclaimer.  TMEP §1213.08(a)(i).  The following is the standard format used by the Office:

 

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

 

TMEP §1213.08(a)(i); see In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).

 

The Office can require an applicant to disclaim an unregistrable part of a mark consisting of particular wording, symbols, numbers, design elements or combinations thereof.  15 U.S.C. §1056(a).  Under Trademark Act Section 2(e), the Office can refuse registration of an entire mark if the entire mark is merely descriptive, deceptively misdescriptive, or primarily geographically descriptive of the goods.  15 U.S.C. §1052(e).  Thus, the Office may require an applicant to disclaim a portion of a mark that, when used in connection with the goods or services, is merely descriptive, deceptively misdescriptive, primarily geographically descriptive, or otherwise unregistrable (e.g., generic).  See TMEP §§1213, 1213.03. 

 

Failure to comply with a disclaimer requirement can result in a refusal to register the entire mark.  TMEP §1213.01(b).

 

A “disclaimer” is a statement that applicant does not claim exclusive rights to an unregistrable component of a mark.  TMEP §1213.  A disclaimer does not affect the appearance of the applied-for mark.  See TMEP §1213.10. 

 

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.

 

C. Identification of Goods

 

Applicant must clarify the identification of goods by indicating that the goods are pre-recorded.  See TMEP §1402.01.

 

Applicant may adopt the following identification of goods, if accurate:  Digital materials, namely, pre-recorded CDs featuring music, in Class 9.  See TMEP §1402.01.

 

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.

 

General Response Guidelines

 

The following information applies only if the applicant chooses to respond to the Office action.  No set form is required for response to this Office action.  However, the applicant must respond to each refusal(s) and/or requirement(s) raised.  The applicant should simply set forth the required changes or statements and request that the Office enter them.  If the response is filed electronically through the Trademark Electronic Application System (TEAS), then applicant should sign the response by entering a “symbol” that applicant has adopted as a signature (e.g., /john doe/, /drl/, and /544-4925/).  The Office will accept any combination of letters, numbers, spaces and/or punctuation marks as a valid signature if it is placed between two forward slash (“/”) symbols.  37 C.F.R. §§2.33(d) and 2.193(c)(1)(iii); TMEP §§304.07 and 804.05. 

 

A non-attorney who is authorized to verify facts on behalf of an applicant under 37 C.F.R. §2.33(a)(2) is not entitled to sign responses to Office actions, unless he or she has legal authority to bind applicant, e.g., a corporate officer.  TMEP §§712.01 and 712.03.  This means that the person that originally signed the verification for the application may not be entitled to sign the response, e.g., a manager might have the firsthand knowledge and implied authority to act on behalf of the applicant that are required to verify facts under 37 C.F.R. §2.33(a)(2), but not have legal authority to bind the applicant (and therefore is not entitled to sign the response).  TMEP §§712.01 et seq. and 712.03.

 

Applicant should include the following information on regular mail or facsimile correspondence with the Office [not necessary if the correspondence is filed electronically via TEAS]:  (1) the name and law office number of the trademark examining attorney; (2) the serial number of this application; (3) the mailing date of this Office action; and, (4) applicant's telephone number.  37 C.F.R. §2.194(b)(1); TMEP §302.03(a).  To expedite prosecution of this application, applicant is encouraged to file its response to this Office action through the TEAS, available at <http://www.uspto.gov/teas/index.html>.  If needed, the applicant should call the Trademark Assistance Center (TAC) for help in using TEAS.  TAC may be reached at (571) 272-9250 or (800) 786-9199.  TAC is open from 8:30 a.m. to 8:00 p.m. Eastern Standard Time, Monday through Friday, except on federal holidays.

 

The following legal authorities govern the processing of trademark and service mark applications by the Office:  The Trademark Act, 15 U.S.C. §§1051 et seq., the Trademark Rules of Practice, 37 C.F.R. Part 2, and the Office’s Trademark Manual of Examining Procedure (TMEP) (4th ed., 2005), available on the United States Patent and Trademark Office web site at <http://www.uspto.gov/main/trademarks.htm>.  The TMEP is a detailed guidebook written by the Office to explain the laws and procedures that govern the trademark application, registration and post registration processes.  The TMEP is the manual that examining attorneys use when examining applications.  Please note that this “Office action” will give references to the TMEP, e.g., TMEP §904.04.  The applicant should refer to the cited section of the TMEP for information regarding the specific issue raised.

 

 

 

 

 

 

/Vivian Micznik First/

Vivian Micznik First

Trademark Attorney, Law Office 114

571-272-9159

 

 

TO RESPOND TO THIS LETTER:  Use the Trademark Electronic Application System (TEAS) response form at http://teasroa.uspto.gov/roa/.  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.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by (1) an individual applicant; (2) someone with legal authority to bind applicant (i.e., a corporate officer, a general partner, all joint applicants); or (3) an authorized attorney, if one is appointed to represent applicant. 

 

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.