Offc Action Outgoing

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:

THIS IS A FINAL ACTION.

This Office action is in response to applicant’s response filed on 03/31/2014.

This application was also refused on the ground that the applied-for mark is merely laudatory and descriptive. Applicant amended the application to seek registration on the Principal Register under Trademark Act Section 2(f), 15 U.S.C. §1052(f). Applicant’s claim of acquired distinctiveness was found to be insufficient. Applicant’s arguments to the contrary have been considered and found unpersuasive. As such, the refusal under Trademark Act Section 2(e)(1) is now made FINAL for the reasons set forth below. See 15 U.S.C. §1052(e)(1); 37 C.F.R. §2.64(a).

For questions about the Office action itself, please contact the assigned trademark examining attorney. All informal communications relevant to this application will be placed in the official application record. Please note that, 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. Because of the legal technicalities and strict deadlines involved in the USPTO application process, applicant may wish to hire a private attorney specializing in trademark matters to represent applicant in this process and provide legal advice. The USPTO may not assist an applicant in the selection of a private attorney. 37 C.F.R. §2.11. For attorney referral information, applicant may consult the American Bar Association’s Consumers’ Guide to Legal Help at http://www.abanet.org/legalservices/findlegalhelp/home.cfm, an attorney referral service of a state or local bar association, or a local telephone directory.

SECTION 2(e)(1) REFUSAL – DESCRIPTIVE / NO ACQUIRED DISTINCTIVENESS

Registration is refused because the applied-for mark is highly laudatory and descriptive of applicant’s goods. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

“Marks that are merely laudatory and descriptive of the alleged merit of a product are … regarded as being descriptive” because “[s]elf-laudatory or puffing marks are regarded as a condensed form of describing the character or quality of the goods.” DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1256, 103 USPQ2d 1753, 1759 (Fed. Cir. 2012) (quoting In re The Boston Beer Co., 198 F.3d 1370, 1373, 53 USPQ2d 1056, 1058 (Fed. Cir. 1999)); see In re Nett Designs, Inc., 236 F.3d 1339, 1342, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (holding THE ULTIMATE BIKE RACK merely laudatory and descriptive of applicant’s bicycle racks being of superior quality); In re The Boston Beer Co., 198 F.3d at 1373-74, 53 USPQ2d at 1058-59 (holding THE BEST BEER IN AMERICA merely laudatory and descriptive of applicant’s beer and ale being of superior quality); TMEP §1209.03(k). In fact, “puffing, if anything, is more likely to render a mark merely descriptive, not less so.” DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d at 1256, 103 USPQ2d at 1759.

In this case, the word “seal” means “to close or make secure against access, leakage, or passage by a fastening or coating.” Merriam-Webster, http://www.merriam-webster.com/dictionary/seal (attached to the 06/26/2013 Office action). Applicant offers “paint sealer,” and “sealer” refers to “a coat (as of size) applied to prevent subsequent coats of paint or varnish from sinking in.” Id. at http://www.merriam-webster.com/dictionary/sealer (attached to the 06/26/2013). As such, the word “SEAL” indicates the function or purpose of the goods. Terms that identify the function or purpose of a product may be generic. TMEP §1209.03(p); see, e.g., In re Gould Paper Corp., 834 F.2d 1017, 1019, 5 USPQ2d 1110, 1112 (Fed. Cir. 1987) (holding SCREENWIPE generic for an anti-static cloth used for cleaning computer and television screens); In re Cent. Sprinkler Co., 49 USPQ2d 1194, 1199 (TTAB 1998) (holding ATTIC generic for sprinklers installed primarily in attics); In re Reckitt & Colman, N. Am. Inc., 18 USPQ2d 1389, 1391 (TTAB 1991) (holding PERMA PRESS generic for soil and stain removers for use on permanent press products). Indeed, applicant has disclaimed “SEAL” even under its Section 2(f) claim, which is an acknowledgement that “SEAL” is generic. See 15 U.S.C. §1056(a); In re Wella Corp., 565 F.2d 143, 196 USPQ 7 (C.C.P.A. 1977); In re Creative Goldsmiths of Wash., Inc., 229 USPQ 766 (TTAB 1986); TMEP §1213.03(b). Because the word “SEAL” indicates the function or purpose of applicant’s goods, it is generic.

The word “super” means “of high grade or quality.” Merriam-Webster, http://www.merriam-webster.com/dictionary/super (attached to the 06/26/2013 Office action). When the word “SUPER” in the applied-for mark is considered in relation to applicant’s goods, it indicates that applicant offers high grade or quality paint sealers. As such, the word “SUPER” in the applied-for mark is highly laudatory, with little source-indicating significance. See, e.g., Wham-O Mfg. Co. v. Plasket, 175 USPQ 62 (TTAB 1972) (stating that “SUPER” is a “highly laudatory term”); In re NTT Elecs. Kabushiki Kaisha, Serial No. 75546159, 2002 TTAB LEXIS 90, at *5 (TTAB Jan. 8, 2002) (non-precedential) (“[T]he additional term SUPER is highly laudatory, with little source-indicating significance.”); In re K. Fisher Enters. Ltd., Serial No. 75847625, 2002 TTAB LEXIS 1, at *3 (TTAB Jan. 4, 2002) (non-precedential) (“The additional term SUPER is highly laudatory, with little source-indicating significance.”).

The Trademark Trial and Appeal Board has determined that “if the word ‘super’ is combined with a word [that] names the goods …, or a principal component, grade or size thereof, then the composite term is considered merely descriptive of the goods ….” In re Phillips-Van Heusen Corp., 63 USPQ2d 1047, 1052 (TTAB 2002) (holding SUPER SILK merely laudatory and descriptive of applicant’s shirts being of an excellent, first-rate, or superior grade of silk fabric), quoted in In re Positec Grp. Ltd., 108 USPQ2d 1161, 1172 (TTAB 2013) (holding SUPERJAWS merely descriptive of applicant’s various machine tools, hand tools, and heavy-duty workbench accessories as superior vice systems for grasping and holding work pieces); see In re Carter-Wallace, Inc., 222 USPQ 729, 730 (TTAB 1984) (holding SUPER GEL merely laudatory and descriptive of applicant’s shaving gel being of superior quality).

Here, the wording SUPER SEAL combines the highly laudatory word “SUPER” with the generic word “SEAL,” making the composite term as a whole highly laudatory and descriptive, with no unique, incongruous, or otherwise non-descriptive meaning. In other words, the applied-for mark as a whole indicates the goods being offered provide high grade or quality paint seals.

Applicant argues that there are various other SUPER SEAL marks registered on the Principal Register both with and without a Section 2(f) claim. This evidence is unpersuasive because each case must be decided on its own facts, and the examining attorney is not bound by prior decisions involving different records. See In re Nett Designs, Inc., 236 F. 3d 1339, 1342, 57 USPQ2d 1564, 1566 ( Fed. Cir. 2001); In re Lean Line, Inc., 229 USPQ 781, 783 (TTAB 1986); TMEP §1209.03(a). Thus, prior registrations do not “establish[] a precedent” as applicant alleges. The question of whether a mark is descriptive is determined based on the evidence of record at the time each registration is sought. In re theDot Commc’ns Network LLC, 101 USPQ2d 1062, 1064 (TTAB 2011); TMEP §1209.03(a); see In re Nett Designs, Inc., 236 F.3d at 1342, 57 USPQ2d at 1566.

Because the applied-for mark is highly laudatory and descriptive, it must be refused registration on the Principal Register under Trademark Act Section 2(e)(1).

Applicant has alleged that the applied-for mark has acquired distinctiveness based on five years’ use in commerce. 15 U.S.C. §1052(f). The allegation of five years’ use is insufficient to show acquired distinctiveness because, as the evidence has demonstrated, the applied-for mark is highly laudatory and descriptive of applicant’s goods. In re Kalmbach Publ’g Co., 14 USPQ2d 1490, 1492 (TTAB 1989); TMEP §1212.05(a). Additional evidence is needed.

To support the claim of acquired distinctiveness, applicant may respond by submitting additional evidence. In re Half Price Books, Records, Magazines, Inc., 225 USPQ 219, 220 n.2 (TTAB 1984); TMEP §1212.02(g). Such evidence may include specific dollar sales under the mark, advertising figures, samples of advertising, consumer or dealer statements of recognition of the mark as a source identifier, affidavits, and any other evidence that establishes the distinctiveness of the mark as an indicator of source. See 37 C.F.R. §2.41(a); In re Ideal Indus., Inc., 508 F.2d 1336, 1339-40, 184 USPQ 487, 489-90 (C.C.P.A. 1975); In re Instant Transactions Corp. of Am., 201 USPQ 957, 958-59 (TTAB 1979); TMEP §§1212.06 et seq.

The following factors are generally considered when determining whether a proposed mark has acquired distinctiveness based on extrinsic evidence: (1) length and exclusivity of use of the mark in the United States by applicant; (2) the type, expense, and amount of advertising of the mark in the United States; and (3) applicant’s efforts in the United States to associate the mark with the source of the goods, such as unsolicited media coverage and consumer studies. See In re Steelbuilding.com, 415 F.3d 1293, 1300, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005); Bd. of Trs. v. Pitts, Jr., 107 USPQ2d 2001, 2016 (TTAB 2013). A showing of acquired distinctiveness need not consider all these factors, and no single factor is determinative. In re Steelbuilding.com, 415 F.3d at 1300, 75 USPQ2d at 1424; see TMEP §§1212.06 et seq. The USPTO will decide each case on its own merits.

The burden of proving that a mark has acquired distinctiveness is on the applicant. Yamaha Int’l Corp. v. Yoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001, 1004 (Fed. Cir. 1988); In re Meyer & Wenthe, Inc., 267 F.2d 945, 122 USPQ 372 (C.C.P.A. 1959); TMEP §1212.01. Applicant has failed to meet its burden of demonstrating that the applied-for mark has acquired distinctiveness.

Consequently, the applied-for mark is refused registration on the Principal Register under Trademark Act Section 2(e)(1) because it is highly laudatory and descriptive.

This refusal is now made FINAL.

The applied-for mark has been refused registration on the Principal Register. Applicant may respond to the refusal by amending the application to seek registration on the Supplemental Register. See 15 U.S.C. §1091; 37 C.F.R. §§2.47, 2.75(a); TMEP §§801.02(b), 816.

Although registration on the Supplemental Register does not afford all the benefits of registration on the Principal Register, it does provide the following advantages:

The registrant may use the registration symbol ®;
The registration is protected against registration of a confusingly similar mark under Trademark Act Section 2(d);
The registrant may bring suit for infringement in federal court; and
The registration may serve as the basis for a filing in a foreign country under the Paris Convention and other international agreements.

See 15 U.S.C. §§1052(d), 1091, 1094; TMEP §815.

RESPONSE OPTIONS

Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a). Applicant may respond by providing one or both of the following:

(1) A response that fully satisfies all outstanding requirements;

(2) An appeal to the Trademark Trial and Appeal Board, with the appeal fee of $100 per class.

37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.

In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review 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).

/Andrew Leaser/

Trademark Examining Attorney

Law Office 117

(571) 272-1911

andrew.leaser@uspto.gov

TO RESPOND TO THIS LETTER: E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail. Instead, go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp to file a formal response. 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.

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.gov.uspto.report/. 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.gov.uspto.report/trademarks/process/status/.

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.