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: 12/29/2013

 

 

 

 

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

 

SUMMARY OF ISSUES that applicant must address:

 

• REFUSAL TO REGISTER - DISPARAGING MARK
• ADDITIONAL INFORMATION REQUIRED
• DISCLAIMER REQUIRED

 

SEARCH RESULTS

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).

 

REFUSAL TO REGISTER – DISPARAGING MARK

Registration is refused because the applied-for mark REDSKINS HOG RINDS 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 Tam, 108 USPQ2d 1305, 1309 (TTAB 2013); In re Lebanese Arak Corp., 94 USPQ2d 1215, 1217 (TTAB 2010); TMEP §§1203.03, 1203.03(b).

 

The following two factors are considered when determining whether matter may be disparaging under Trademark Act Section 2(a):

 

(1) What is the likely meaning of the matter in question, taking into account not only dictionary definitions, but also the relationship of the matter to the other elements in the mark, the nature of the goods and/or services, and the manner in which the mark is used in the marketplace in connection with the goods and/or services

 

(2) If that meaning is found to refer to identifiable persons, institutions, beliefs, or national symbols, whether that meaning may be disparaging to a substantial composite of the referenced group

 

In re Tam, 108 USPQ2d at 1309; In re Lebanese Arak Corp., 94 USPQ2d at 1217; In re Heeb Media LLC, 89 USPQ2d 1071, 1074 (TTAB 2008); TMEP §1203.03(b)(i).

 

“REDSKIN” is defined as follows: 

 

“Offensive Slang  Used as a disparaging term for a Native American” (see attached evidence from http://education.yahoo.com/reference/dictionary/entry/redskin captured 12/29/13);

 

“an old-fashioned informal name, now considered taboo, for a Native American” (see attached evidence from http://www.collinsdictionary.com/dictionary/english/redskin captured 12/29/13);

 

“(slang) offensive term for Native Americans” (see attached evidence from https://www.vocabulary.com/dictionary/Redskin captured 12/29/13);

 

“dated offensive  an American Indian” (see attached evidence from http://www.oxforddictionaries.com/us/definition/american_english/redskin?q=redskin captured 12/29/13);

 

“Slang (often disparaging and offensive)  a North American Indian” (see attached evidence from http://dictionary.infoplease.com/redskin captured 12/29/13).

 

As evidence that American Indians find the term “REDSKINS” offensive, see the attached news article, “NCAI Report: Redskins Name Has ‘Ugly and Racist Legacy’” (Indian Country Today online, October 11, 2013) located at http://indiancountrytodaymedianetwork.com/2013/10/11/ncai-report-redskins-name-has-ugly-and-racist-legacy-151714 (captured 12/29/13).  In fact, the National Congress of American Indians (NCAI) now uses the designations “R*dskins” and “R Word” when referring to “REDSKINS” sports teams mascots (see, e.g., attachment from http://www.ncai.org/resources/ncai_publications/ending-the-legacy-of-racism-in-sports-the-era-of-harmful-indian-sports-mascots) captured 12/29/13.

 

As additional evidence that American Indians find the term “REDSKINS” offensive, see the attached article, “Oneida Indian Nation pressures NFL’s Redskins to change name” (MSNBC, September 9, 2013)) located at http://www.msnbc.com/martin-bashir/oneida-indian-nation-pressures-nfls-redskins (captured 12/29/13).  See also the attached article, “Native American Activists Want Supreme Court to Hear Redskins Case” (Washington Post, September 16, 2009) located at http://www.washingtonpost.com/wp-dyn/content/article/2009/09/15/AR2009091500973.html (captured 12/29/13), which states that “Native American activists are trying to get the Supreme Court involved in its long-running dispute with the Washington Redskins about whether the team’s name is so offensive that it does not deserve trademark protection.”

 

Given that “REDSKINS” in the mark is a derogatory slang term that refers to, and is considered offensive by, American Indians, registration of the applied-for mark must be refused under Section 2(a) of the Trademark Act.

 

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

 

Applicant must respond to the requirements set forth below.

 

ADDITIONAL INFORMATION REQUIRED

Applicant must specify whether the word “REDSKIN” and/or ‘REDSKINS” has any significance in the pork rind trade or industry or as applied to the goods described in the application, or if such wording is a “term of art” within applicant’s industry.  See 37 C.F.R. §2.61(b); TMEP §814.

 

Failure to respond to a request for information is an additional ground for refusing registration.  See In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701 (TTAB 2003); TMEP §814.

 

DISCLAIMER REQUIRED

Applicant must disclaim the descriptive wording “HOG RINDS” apart from the mark as shown because it merely describes a feature of applicant’s goods.  See 15 U.S.C. §§1052(e)(1), 1056(a); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005). 

 

“HOG” means “a domesticated pig” (see attached evidence from http://www.collinsdictionary.com/dictionary/english/hog captured 12/29/13).  Applicant’s goods are pork RINDS; therefore, the wording “HOG RINDS” merely describes the nature of the goods.

 

Applicant should submit a disclaimer in the following standardized format:

 

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

 

For an overview of disclaimers and instructions on how to satisfy this disclaimer requirement online using the Trademark Electronic Application System (TEAS) form, please go to http://www.uspto.gov/trademarks/law/disclaimer.jsp.

 

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 and/or requirements 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.

 

/Kathy de Jonge/

Examining Attorney

Law Office 107

(571) 272-9152

kathleen.dejonge@USPTO.gov (informal use only)

 

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.