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:

Applicant’s attorney has indicated via email that the first two pages of the first Office action were missing.

This Office action has copied the requirements and refusals from the first Office action. Any references to evidence can be found attached to the first Office action.

Applicant must respond to all issues raised in this Office action (as supported by the evidence attached to the previous Office action) within six months from the mailing date indicated above.

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, 2.65(a); TMEP §§711, 718.03.

SEARCH OF OFFICE’S DATABASE OF MARKS

The Office records have been searched and there are no similar registered or pending marks that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.

REFUSAL – FAILURE TO FUNCTION AS A TRADEMARK

Registration is refused because the applied-for mark is merely informational and constitutes a common term or slogan that is widely used in the marketplace; it therefore does not function as a trademark or service mark to indicate the source of applicant’s goods and/or services and to identify and distinguish them from others. Trademark Act Sections 1, 2, 3, and 45, 15 U.S.C. §§1051-1053, 1127; see In re Boston Beer Co., 198 F.3d 1370, 1372-74, 53 USPQ2d 1056, 1058-59 (Fed. Cir. 1999) (holding THE BEST BEER IN AMERICA unregistrable for beer and ale because the mark would be perceived as a common, laudatory advertising phrase and not a trademark); In re Aerospace Optics, Inc., 78 USPQ2d 1861, 1864 (TTAB 2006) (holding SPECTRUM unregistrable for illuminated pushbutton switches because the mark would be perceived as information about the multiple color feature of the goods and not a trademark); In re Melville Corp., 228 USPQ 970, 971 (TTAB 1986) (holding BRAND NAMES FOR LESS unregistrable for retail clothing store services because the mark would be perceived as a common promotional phrase and not a service mark); TMEP §1202.04.

Determining whether a term or slogan functions as a trademark or service mark depends on how it would be perceived by the relevant public. In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229 (TTAB 2010); In re Aerospace Optics, Inc., 78 USPQ2d at 1862; TMEP §1202.04. Slogans or terms that are common laudatory phrases or statements that are ordinarily used in the marketplace, business, or in a particular trade or industry are not registrable. In re Eagle Crest, Inc., 96 USPQ2d at 1229 (citing In re Boston Beer Co., 198 F.3d at 1370, 53 USPQ2d at 1056). The more commonly a phrase is used in the marketplace by various businesses, or in a particular trade or industry, the less likely the public will use it to identify only one source and the less likely the phrase will be recognized by purchasers as a trademark or service mark. See In re Hulting, 107 USPQ2d 1175, 1177 (TTAB 2013) (quoting In re Eagle Crest, Inc., 96 USPQ2d at 1229); TMEP §1202.04.

The attached evidence from several third-party websites shows that variations of the terms “ENDURANCE TESTED” and “FIELD PROVEN” are used in the marketplace as common informational phrases in reference to a wide range of goods. Because consumers are accustomed to seeing this term or slogan used in this manner, when it is applied to applicant’s goods and/or services, consumers will perceive this term or slogan merely as informational matter indicating that applicant’s products have been tested and used in the field. For example, note the phrase on the website for Doosan forklifts that reads: “Field Proven Endurance Tested…To Give You the Best Forklift Value on the Market.” Thus, the proposed mark will not be perceived as a trademark or service mark that identifies the source of the goods and/or services. It will be viewed as simply as indication or notice that testing has been performed on the products.

An applicant may not overcome this refusal by attempting to amend the application to seek registration on the Supplemental Register or to assert a Section 2(f) claim of acquired distinctiveness. TMEP §1202.04; see In re Eagle Crest, Inc., 96 USPQ2d at 1229.

Applicant should note the following additional refusal.

SECTION 2(e)(1) REFUSAL – MERELY DESCRIPTIVE

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

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods and/or services. TMEP §1209.01(b); see, e.g., 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) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)).

The determination of whether a mark is merely descriptive is made in relation to an applicant’s goods and/or services, not in the abstract. DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012); In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); TMEP §1209.01(b); see, e.g., In re Polo Int’l Inc., 51 USPQ2d 1061, 1062-63 (TTAB 1999) (finding DOC in DOC-CONTROL would refer to the “documents” managed by applicant’s software rather than the term “doctor” shown in a dictionary definition); In re Digital Research Inc., 4 USPQ2d 1242, 1243-44 (TTAB 1987) (finding CONCURRENT PC-DOS and CONCURRENT DOS merely descriptive of “computer programs recorded on disk” where the relevant trade used the denomination “concurrent” as a descriptor of a particular type of operating system).

“Whether consumers could guess what the product [or service] is from consideration of the mark alone is not the test.” In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).

In this case, applicant’s mark is ENDURANCE TESTED FIELD PROVEN for firearms.

The mark will indicate to consumers that applicant’s products have been tested for durability and verified or tested in practical applications.

Note from the attached dictionary evidence that “endurance” can refer to something that has “lasting quality” or can withstand stress. In addition, the word “field” can be defined as:

An area or setting of practical activity or application outside an office, school, factory, or laboratory: biologists working in the field; a product tested in the field.

Finally, the word “proven” can refer to something that has been demonstrated or verified without doubt. See additional attached dictionary evidence.

The entirety of applicant’s mark will indicate to consumers that applicant’s products have been tested to ensure their lasting quality and have been demonstrated and verified in practical applications.

The phrases “endurance tested” or “field proven” are used frequently as descriptors in reference to firearms. See attached news articles and third-party websites.

Therefore, because applicant’s mark immediately indicates features of its goods, registration must be refused under Section 2(e)(1).

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

If applicant chooses to respond to the refusal(s) to register, then applicant must also respond to the requirement(s) set forth below.

SUBSTITUTE SPECIMEN REQUIRED

Registration is refused because the specimen consists of advertising material and thus does not show the applied-for mark in use in commerce for the identified goods. 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a). Advertising materials are generally not acceptable as specimens to show use in commerce for goods. See In re MediaShare Corp., 43 USPQ2d 1304, 1307 (TTAB 1997); In re Schiapparelli Searle, 26 USPQ2d 1520, 1522 (TTAB 1993); TMEP §§904.04(b), (c), 1301.04.

An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods and/or services identified in the application or amendment to allege use. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).

Examples of specimens for goods may include tags, labels, instruction manuals, containers, and photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale. See TMEP §§904.03 et seq. Webpages may also be acceptable specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods. TMEP §904.03(i).

Applicant may respond to this refusal by satisfying one of the following:

(1) Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the goods identified in the application or amendment to allege use.

(2) Amend the filing basis to intent to use under Section 1(b), for which no specimen is required. This option will later necessitate additional fee(s) and filing requirements such as providing a specimen at a subsequent date.

For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.

If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

/Michelle E. Dubois/

Trademark Attorney

Law Office 107

(571) 272-5887

michelle.dubois@uspto.gov

TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/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.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.