Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

Serial Number  76/618300

 

The trademark examining attorney has reviewed applicant's response and has determined the following.  Applicant’s amended identification of services is accepted and thus the requirement is satisfied and withdrawn. The examining attorney has considered applicant's arguments against the Section 2(e)(1) refusal carefully but found them unpersuasive.  Thus, the refusal of registration under Section 2(e)(1) must be continued and made FINAL.

 

SUBSTANTIVE REFUSAL – MARK IS MERELY DESCRIPTIVE

 

Registration is refused because the proposed mark merely describes a feature of applicant’s  services.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §§1209 et seq.

 

A mark is merely descriptive under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1), if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant goods and/or services.  In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987);  In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re Patent and Trademark Services Inc., 49 USPQ2d 1537, 1538 (TTAB 1998); In re Eden Foods, Inc., 24 USPQ2d 1757 (TTAB 1992); In re MetPath Inc., 223 USPQ 88 (TTAB 1984); In re Bright‑Crest, Ltd., 204 USPQ 591 (TTAB 1979); TMEP §1209.01(b).  A mark that describes an intended user of a product or service is also merely descriptive within the meaning of Section 2(e)(1).  Hunter Publishing Co. v. Caulfield Publishing Ltd., 1 USPQ2d 1996 (TTAB 1986); In re Camel Mfg. Co., Inc., 222 USPQ 1031 (TTAB 1984); In re Gentex Corp., 151 USPQ 435 (TTAB 1966).

 

The determination of whether a mark is merely descriptive is considered in relation to the identified goods and/or services, not in the abstract.  In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Polo International Inc., 51 USPQ2d 1061 (TTAB 1999) (Board found that DOC in DOC-CONTROL would be understood to refer to the “documents” managed by applicant’s software, not “doctor” as shown in dictionary definition); In re Consolidated Cigar Co., 35 USPQ2d 1290 (TTAB 1995); In re Pennzoil Products Co., 20 USPQ2d 1753 (TTAB 1991); In re Digital Research Inc., 4 USPQ2d 1242 (TTAB 1987) (CONCURRENT PC-DOS found merely descriptive of “computer programs recorded on disk;” it is unnecessary that programs actually run “concurrently,” as long as relevant trade clearly uses the denomination “concurrent” as a descriptor of this particular type of operating system); In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985); In re American Greetings Corp., 226 USPQ 365, 366 (TTAB 1985) (“Whether consumers could guess what the product is from consideration of the mark alone is not the test”); In re Bright-Crest, Ltd., 204 USPQ at 593; In re Recovery, 196 USPQ 830 (TTAB 1977); TMEP §1209.01(b).

 

A term need not describe all of the purposes, functions, characteristics or features of the goods and/or services to be merely descriptive.  For the purpose of a Section 2(e)(1) analysis, it is sufficient that the term describe only one attribute of the goods and/or services to be found merely descriptive.  In re Patent and Trademark Services, 49 USPQ2d at 1539; In re Venture Lending Associates, supra; In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973); TMEP §1209.01(b).

 

Applicant has applied for the mark THE OFFICIAL SITE FOR ROCK MUSIC for, as amended, “online retail store services featuring prerecorded compact discs, concert tickets, posters, clothing, infant wear, ornamental pins, key chains, totes and handbags, decals, stuffed toys, clocks, mouse pads, and lunchboxes in Class 35; “providing electronic mail services over global computer networks, for transmission of message among computer users; and streaming of music audio material via a global computer information network" in Class 38; “Providing prerecorded music via a global computer information network; and entertainment services, namely, providing a radio program in the field of music via a global computer network" in Class 41; and “computer services providing customized online web pages, featuring user-defined information, which includes search engines and online web links to news, weather, sports, current events, reference materials, and customized e-mail messages, all in a wide range of user-defined fields, providing temporary use of on-line non-downloadable software for use in creating customized websites and web pages, creating indices of general and personal information to be made available for retrieval by means of a global computer network” in Class 42.

The relevant definitions of the terms were set forth in the previous office action.

In the present case, applicant's mark is a laudatory phrase pertaining to the applicant's services, namely, the allegedly authoritative website for prerecorded compact discs, concert tickets, information, forums, online radio programs, streaming audio, content and merchandise relating to or at least featuring rock music. 

 

Laudatory terms, those which attribute quality or excellence to goods or services, are equivalent to other descriptive terms under Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1). That is, laudatory terms are nondistinctive and unregistrable without proof of acquired distinctiveness.  In re The Boston Beer Co. Limited Partnership, No. 99-1123 (Fed. Cir. Dec. 7, 1999), affirming 47 USPQ2d 1914 (TTAB 1998) (BEST BEER IN AMERICA is so highly laudatory and descriptive of the qualities of its products that the slogan does not and could not function as a trademark); Exquisite Form Industries, Inc. v. Exquisite Fabrics of London, 378 F. Supp. 403, 183 USPQ 666 (S.D.N.Y. 1974) (EXQUISITE); In re Ervin, 1 USPQ2d 1665 (TTAB 1986) (THE ORIGINAL); In re Inter‑State Oil Co., 219 USPQ 1229 (TTAB 1983) (PREFERRED); In re Royal Viking Line A/S, 216 USPQ 795 (TTAB 1982) (WORLD CLASS); In re Wileswood, Inc., 201 USPQ 400 (TTAB 1978) (AMERICA'S BEST POPCORN! and AMERICA'S FAVORITE POPCORN!).

 

As shown by applicant’s specimens consisting of excerpts from applicant’s ROCK.COM website, applicant’s website seeks to “be a haven for Rock music lovers worldwide and provide the most complete set of content related to Rock music” and “has become the #1 site for Rock music on the web.”

 

Applicant argues that the term "official site" could "imply a specific geographic location where Rock Music was invented or honored".  However, as noted above, whether a term or phrase is merely descriptive, however, is determined not in the abstract but in relation to the identified services, the context in which it is being used on or in connection with those services and the possible significance that the term or phrase would have to the average purchaser of the services because of the manner of its use.  See cases cited above.   In other words, the examining attorney must consider the potential significance the mark would have, in context, to the average purchasers of the recited services in the marketplace.  In re Omaha National Corp., supra; In re Abcor Development Corp., supra; In re Venture Lending Associates, supra.  

 

As such, the question is not, as applicant argues, whether someone presented with the mark could guess what the goods or services are,  Rather, the question is whether someone who knows what the goods or services are will understand the mark to convey information about them.  See In re American Greeting Corp., supra, 226 USPQ at 366 ("whether consumers could guess what the product [or service] is from consideration of the mark alone is not the test"); In re Home Builders Association of Greenville, 18 USPQ2d 1313 (TTAB 1990).  Here, in relationship to applicant's various online computer services, the proposed mark "THE OFFICIAL SITE OF ROCK MUSIC" clearly refers to the connotation of the authoritative website of rock music.  This is further demonstrated by applicant's website which indicates that the website “has become the #1 site for Rock music on the web.”

 

For the above reasons, the refusal under Section 2(e)(1) is continued and made FINAL.

 

Although the trademark examining attorney has refused registration on the Principal Register, applicant may respond to the stated refusal under Section 2(e)(1) by amending the application to seek registration on the Supplemental Register.  Trademark Act Section 23, 15 U.S.C. §1091; 37 C.F.R. §§2.47 and 2.75(a); TMEP §§801.02(b), 815 and 816 et seq.

 

In the alternative, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

 

PROPER RESPONSE TO FINAL ACTION

 

If applicant fails to respond to this final action within six months of the mailing date, the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond to this final action by: 

 

(1)   submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); and/or

(2)   filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).

 

In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2).  37 C.F.R. §2.64(a).  See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matter.  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

 

 

/Douglas M. Lee/

Trademark Examining Attorney

Law Office 107

Tel. (571) 272-9343

Fax. (571) 273-9107

douglas.lee4@uspto.gov

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action has been issued via email, you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above and include the serial number, law office number and examining attorney’s name in your response.

 

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.