Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.

 

ISSUE/MAILING DATE:

 

THIS IS A FINAL ACTION.

 

 

Applicant’s Correspondence

This action responds to applicant’s correspondence filed November 30, 2009.  Applicant submitted a substitute specimen, which cannot be accepted because it was not properly verified.  Applicant also argued against the immoral or scandalous matter refusal under Section 2(a) of the Trademark Act.  The examining attorney has considered applicant’s arguments carefully, but is not persuaded.  Accordingly, the refusal under Trademark Act Section 2(a) is now made FINAL for the reasons set forth below.  See 15 U.S.C. §1052(a); 37 C.F.R. §2.64(a).  In addition, the requirements for a signed specimen verification and an amended description of the mark are now made FINAL.  See 37 C.F.R. §2.64(a).

 

Registration Refused – Mark is Immoral or Scandalous

Registration is refused because the applied-for mark consists of or comprises immoral or scandalous matter.  Trademark Act Section 2(a), 15 U.S.C. §1052(a); see TMEP §1203.01.  The applied-for mark includes the depiction of an “upright penis” and is thus scandalous because of its overt sexual connotation and commercial impression.

 

To be considered “scandalous,” a mark must be “shocking to the sense of truth, decency or propriety; disgraceful; offensive; disreputable; . . . giving offense to the conscience or moral feelings; . . . [or] calling out [for] condemnation,” in the context of the marketplace as applied to goods and/or services described in the application.  In re Mavety Media Group Ltd., 33 F.3d 1367, 1371, 31 USPQ2d 1923, 1925 (Fed. Cir. 1994) (internal punctuation omitted) (quoting In re Riverbank Canning Co., 95 F.2d 327, 328, 37 USPQ 268, 269 (C.C.P.A. 1938)); In re Wilcher Corp., 40 USPQ2d 1929, 1930 (TTAB 1996); see TMEP §1203.01.  Scandalousness is determined from the standpoint of “not necessarily a majority, but a substantial composite of the general public, . . . and in the context of contemporary attitudes.”  In re Mavety Media Group Ltd., 33 F.3d at 1371, 31 USPQ2d at 1925 (internal punctuation omitted) (quoting In re McGinley, 660 F.2d 481, 485, 211 USPQ 668, 673 (CCPA 1981) and In re Old Glory Condom Corp., 26 USPQ2d 1216, 1219 (TTAB 1993) ; see TMEP §1203.01.

 

Applicant argues that the mark is not immoral or scandalous, but rather is best referred to as “slang” and that the Webster’s dictionary “calls ‘dick’ slang.”  The examining attorney is not persuaded.  Although it is not relevant to the mark at issue, as shown by the attached excerpt from Webster’s dictionary, the term “dick” is stated to be “usually vulgar.”  Further, as shown by the attached internet evidence, the showing of one’s genitals is a criminal act known as “indecent exposure” which actions are prohibited by law.  Similarly here, the showing of a depiction of a penis, which is male genitalia, on clothing is immoral or scandalous. 

 

A mark that is deemed scandalous under Trademark Act Section 2(a) is not registrable on either the Principal or Supplemental Register.  TMEP §1203.01; see 15 U.S.C. §1052(a).

 

This refusal is maintained and made FINAL.

 

Unverified Substitute Specimen Otherwise Acceptable

Applicant was previously required to submit a verified substitute specimen showing use in commerce of the applied-for mark because the original specimen was merely a visual depiction of the mark.  Pending receipt of a proper response, registration was refused because the specimen did not show the applied-for mark in use in commerce as a trademark and/or service mark.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).

 

In response, applicant provided an unverified substitute specimen that appears to show use in commerce of the applied-for mark.  To properly respond to the refusal and make the unverified substitute specimen part of the application record that will be considered for examination, however, applicant must provide verification that the substitute specimen was in use in commerce at least as early as the filing date of the application. 

 

Accordingly, applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “The substitute specimen was in use in commerce at least as early as the filing date of the application.”  37 C.F.R. §2.59(a); TMEP §904.05; see 37 C.F.R. §2.193(e)(1).  If submitting the substitute specimen required an amendment to the dates of use, applicant must also verify the amended dates.  37 C.F.R. §2.71(c); TMEP §904.05.

 

If applicant cannot provide this verified statement, applicant must either provide a different specimen for which this verified statement can be made, or amend the application from a use in commerce basis under Trademark Act Section 1(a) to an intent to use basis under Section 1(b), for which no specimen is required.  See TMEP §806.03(c).  However, if applicant amends the basis to Section 1(b), registration will not be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen.  See 15 U.S.C. §1051(c), (d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.

 

To amend to Section 1(b), applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “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 filing date of the application.”  37 C.F.R. §2.34(a)(2); TMEP §806.01(b); see 15 U.S.C. §1051(b); 37 C.F.R. §§2.35(b)(1), 2.193(e)(1).

 

The refusal of registration based on the failure to provide a specimen that shows the applied-for mark in use in commerce as a trademark is now made final.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a), 2.64(a); TMEP §§904, 904.07(a).

 

Description of the Mark Amendment Required

The description of the mark is inaccurate because it describes the letters as being to the left and right of the design feature, when they are actually attached to/part of it.  Applications for marks not in standard characters must include an accurate and concise description of the entire mark that identifies literal elements as well as any design elements.  See 37 C.F.R. §2.37; TMEP §§808.02, 808.03(d). 

 

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

 

The mark consists of the stylized letters DH inside of two single-line diamonds.  The letters are connected, and at their point of connection, form an upright penis.

 

This requirement is maintained and made FINAL.

 

Proper Response to Final Action

If applicant does not respond within six months of the date of issuance of this final Office action, the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond to this final Office action by:

 

(1)  Submitting a response that fully satisfies all outstanding requirements, if feasible; 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), 2.64(a); TBMP ch. 1200; TMEP §714.04.

 

In certain rare circumstances, a petition to the Director may be filed pursuant to 37 C.F.R. §2.63(b)(2) to review a final Office action that is limited to procedural issues.  37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

 

Sara N. Benjamin

/Sara N. Benjamin/

Examining Attorney

Law Office 110

571.272.8847

 

 

 

RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.gov.uspto.report/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail.  For technical assistance with the form, please e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned examining attorney.  Do not respond to this Office action by e-mail; the USPTO does not accept e-mailed responses.

 

If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response.  Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.

 

STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov.  When conducting an online status check, print and maintain a copy of the complete TARR screen.  If the status of your application has not changed for more than six months, please contact the assigned examining attorney.