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 acknowledges receipt of applicant’s communication dated September 18, 2015, in which applicant amended the identification of goods, paid an additional fee for adding a class, clarified the nature of the original specimen, and argued against the Trademark Act Sections 1, 2, 3, and 45 Refusal (Does Not Function As a Trademark – Informational Wording about Applicant’s Goods).

The following requirements have been satisfied:

Identification of Goods Requirement
Fee Requirement

The following refusal has been withdrawn:

Specimen Refusal

The examining attorney maintains and now makes FINAL the following refusal:

Trademark Act Sections 1, 2, 3, and 45 Refusal – Does Not Function As a Trademark – Informational Wording about Applicant’s Goods

Trademark Act Sections 1, 2, 3 and 45 Refusal – Does Not Function As a Trademark – InformationAL WorDIng about Applicant’s Goods

Registration is refused because the applied-for mark is merely informational and constitutes common slogans that are commonly used by those in applicant’s particular trade or industry; it does not function as a trademark to indicate the source of applicant’s goods 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. See In re Phoseon Technology Inc., 103 USPQ2d 1822, 1827 (TTAB 2012) (noting the critical inquiry in determining whether a mark, as used on the specimen, functions as a trademark is the “commercial impression it makes on the relevant public (e.g., whether the term sought to be registered would be perceived as a mark identifying the source of the goods or merely as an informational phrase); 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. TMEP §1202.04.

The evidence attached to the Office action dated March 16, 2015 from http://www.wplastics.com/ultra_grip.asp, http://www.thomasnet.com/productsearch/productline/30668234-14967-1094-/plastic-bag-partners/extended-core-stretch-wrap-films-with-tension-handle/, http://www.lowes.com/pd_186219-51820-186219-D_0__?productId=50192329 and http://www.housewares.org/show/exhibit/dir/files/1338260119_kleerguard%20catalog_2014.pdf shows that this slogan is commonly used by those in applicant’s particular trade or industry to indicate as a common promotional phrase about the characteristics of its product. Because consumers are accustomed to seeing this slogan used in this manner, when it is applied to applicant’s goods, consumers will perceive this slogan merely as informational matter indicating that applicant’s goods has a feature that facilitate even plastic wrapping. Thus, this slogan will not be perceived as a trademark or service mark that identifies the source of the goods.

Moreover, the layout of the wording of the slogan reveals that the wording is merely informational. The wording is a section header for further bullet-pointed information about the goods. This wording and the additional informational wording is directly below other informational messages about the product (i.e., “Extra strong film that can be applied to all items from gardening tools household furnishings”).

Applicant argues that the examiner cites several cases regarding laudatory advertising in support of the refusal of the proposed mark and that applicant’s wording is not laudatory in any sense but rather applicant believes it is only suggestive.

However, applicant argument is unpersuasive because the informational refusal is not based solely on laudatory statements. For example, In re Aerospace Optics, Inc., 78 USPQ2d 1861, 1864 (TTAB 2006), held 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. The holding in that case was not based on laudatory statements but rather on the fact that SPECTRUM would be perceived as merely providing information about the goods. See also In re AOP LLC, 107 USPQ2d 1644, 1655 (TTAB 2013) (finding AOP merely informational and not source-identifying for wine as it informs consumers of a certification process); In re T.S. Designs, Inc., 95 USPQ2d 1669 (TTAB 2010) (holding CLOTHING FACTS merely an informational phrase and not a source identifier based on the likely consumer perception of the phrase used on a clothing label in connection with manufacturing information reminiscent of the "Nutrition Facts" label required for food products by the United States Food and Drug Administration); TMEP §1202.04.

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.

RESPONSE GUIDANCE

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 and/or resolves all outstanding refusals.

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

37 C.F.R. §2.63(b)(1)-(2); 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. 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).

/Donald Johnson/

Examining Attorney

Law Office 104

(571) 272-7831

don.johnson@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.