United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 79285603
Mark: XVIDEOS
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Correspondence Address:
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Applicant: WGCZ, a.s.
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Reference/Docket No. N/A
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
International Registration No. 1530884
Notice of Provisional Full Refusal
Deadline for responding. The USPTO must receive applicant’s response within six months of the “date on which the notification was sent to WIPO (mailing date)” located on the WIPO cover letter, or the U.S. application will be abandoned. To confirm the mailing date, go to the USPTO’s Trademark Status and Document Retrieval (TSDR) database, select “US Serial, Registration, or Reference No.,” enter the U.S. application serial number in the blank text box, and click on “Documents.” The mailing date used to calculate the response deadline is the “Create/Mail Date” of the “IB-1rst Refusal Note.”
Respond to this Office action using the USPTO’s Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Discussion of provisional full refusal. This is a provisional full refusal of the request for extension of protection to the United States of the international registration, known in the United States as a U.S. application based on Trademark Act Section 66(a). See 15 U.S.C. §§1141f(a), 1141h(c).
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SUMMARY OF ISSUES
- Partial Section 2(e)(1) Refusal – Merely Descriptive (Class 41 Only)
- Section 2(f) Suggested as to Class 41 Services (Advisory)
- Request to Divide Class 41 Services (Advisory)
- Amendment to Identification of Goods and Services Required
- Amendment to Mark Description Required
PARTIAL SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
THIS PARTIAL REFUSAL APPLIES ONLY TO CLASS 41 SERVICES
Applicant’s applied-for mark is “XVIDEOS” for “Entertainment services, namely, providing a web site featuring photographic, audio, video and prose presentations featuring adult-oriented content” in International Class 41.
Registration is refused because the applied-for mark merely describes a characteristic of applicant’s services. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.
The attached evidence from the websites of The Free Dictionary (www.legal-dictionary.thefreedictionary.com), Vulture (www.vulture.com), and Wikipedia (www.en.wikipedia.com), shows that an “X” rating is a rating which has been used to designate films which contain explicit sexuality. Further, the attached evidence from the Merriam-Webster Online Dictionary (www.merriam-webster.com) shows that “VIDEOS” are digital recordings of images or sets of images, such as movies or animation.
The attached Internet evidence from the website of Google (www.google.com), shows that the applicant’s website, www.xvideos.com, offers explicit videos in the nature of free porn videos.
Additionally, the wording “video” appears in the applicant’s identification of services.
Thus, the wording “X” and “VIDEOS” is merely descriptive of the applicant’s entertainment services, namely, providing a web site featuring photographic, audio, video and prose presentations featuring adult-oriented content, being explicit videos.
Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the services is the combined mark registrable. See In re Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968); In re Positec Grp. Ltd., 108 USPQ2d 1161, 1162-63 (TTAB 2013).
In this case, the individual components of applicant’s mark, “X” and “VIDEOS”, and the composite result of the individual components are descriptive of applicant’s services and do not create a unique, incongruous, or nondescriptive meaning in relation to the services. Specifically, “XVIDEOS” immediately informs consumers that applicant’s services offer the provision of a web site featuring photographic, audio, video and prose presentations featuring adult-oriented content in the nature of explicit videos. Therefore, the wording “XVIDEOS” is merely descriptive of applicant’s services.
Further, applicant owns active U.S. Registration Nos. 4341707 and 5198416 for the mark “XVIDEOS” for “Entertainment services, namely, providing a web site featuring photographic, audio, video and prose presentations featuring adult-oriented content.” In this case, applicant has applied for essentially the same mark for the identical services.
In applicant’s prior registrations, applicant claimed acquired distinctiveness under Trademark Act Section 2(f) unconditionally and not in the alternative for “XVIDEOS” for “Entertainment services, namely, providing a web site featuring photographic, audio, video and prose presentations featuring adult-oriented content” in the initial application or a subsequent amendment. Thus, applicant conceded that this wording was not inherently distinctive but was rather merely descriptive. See Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1479 (TTAB 2016) (citing Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 1358, 92 USPQ2d 1626, 1629 (Fed. Cir. 2009)); TMEP §1212.02(b)-(c). Accordingly, applicant’s prior registrations are probative to show that applicant’s applied-for mark is not inherently distinctive in this case. See In re Thomas Nelson, Inc., 97 USPQ2d 1712, 1713 (TTAB 2011); TMEP §1212.02(c).
Accordingly, registration is refused on the Principal Register under Section 2(e)(1) of the Trademark Act.
SECTION 2(f) SUGGESTED AS TO CLASS 41 (ADVISORY)
The mark has become distinctive of the Class 41 services as evidenced by the ownership of active U.S. Registration Nos. 4341707 and 5198416 on the Principal Register for the same mark for sufficiently similar services.
TMEP §1212.04(e); see 37 C.F.R. §2.41(a)(1).
REQUEST TO DIVIDE (ADVISORY)
Generally, in response to a refusal or requirement that pertains only to certain classes, goods, and/or services, an applicant may file a request to divide the application (form # 3) into two or more separate applications so that any acceptable classes, goods, and/or services may be transferred to the divided out application(s) and proceed toward registration. See 37 C.F.R. §2.87; TMEP §1110 et seq. Any outstanding deadline in effect at the time the application is divided will generally apply to each new divided out application. See 37 C.F.R. §2.87(e); TMEP §1110.05 (see list of exceptions).
There is a fee for each new application created. See 37 C.F.R. §§2.6(a)(19)(ii), 2.87(b); TMEP §1110.04. And if dividing out some, but not all, of the goods or services within a class, an additional application filing fee will be required for each new separate application created by the division. 37 C.F.R. §§2.6(a)(1)(i)-(iii), 2.87(b); TMEP §1110.02.
However, in this case, if the applicant were to request to divide Class 41 services into a separate application, the divided application would appear to be an exact duplicate of U.S. Registration No. 5198416. 37 C.F.R. §2.48; TMEP §703. See the attached registration.
The USPTO will not issue duplicate registrations. 37 C.F.R. §2.48; TMEP §703.
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration. However, if applicant responds to the refusal, applicant must also respond to the requirements set forth below.
AMENDMENT TO IDENTIFICATION OF GOODS AND SERVICES REQUIRED
The identification of goods and services contains indefinite wording that must be clarified. TMEP §1402.01.
Applicant must clarify the wording for several of the goods and services as to the nature or specific type of goods and services being provided as indicated further below. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Please see below for further explanation and underlined, italicized, and bolded suggested amendments.
Therefore, applicant must remove the brackets from the identification and incorporate any parenthetical or bracketed information into the description of the goods and services.
Applicant may respond by amending this wording to clarify the nature of the goods; however, any amendment to the identification must identify goods in International Class 3 and be within the scope of the wording in the initial application. See TMEP §§1402.01(c), 1402.07(a), 1904.02(c)(iii). The scope of the identification for purposes of permissible amendments is limited by the international class assigned by the International Bureau of the World Intellectual Property Organization (International Bureau). 37 C.F.R. §2.85(f); TMEP §§1402.07(a), 1904.02(c). If an applicant amends to goods that are in a class other than that assigned by the International Bureau, the amendment will not be accepted because it would exceed the scope and those goods would no longer have a basis for registration under U.S. law. TMEP §§1402.01(c), 1904.02(c).
Alternatively, applicant may delete this unacceptable wording from the identification. See TMEP §1904.02(c)(iii)-(iv). However, once an application has been expressly amended to delete goods, those items generally may not later be re-inserted. See TMEP §1402.07(e).
If applicant believes the classification assigned by the International Bureau was in error, applicant may contact the International Bureau and request correction of, or recordation of a limitation to, the international registration. TMEP §1904.02(c)(iii)-(iv), (e)(i)-(e)(ii). However, filing such a request with the International Bureau is not considered a formal response to this Office action. See TMEP §1904.02(c)(iv), (e)(iii). Applicant must also file a timely and complete response to this Office action, stating that applicant has filed a request for a correction or to record a limitation with the International Bureau that will resolve the outstanding issue. See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §§711, 718.03, 1904.02(c)(iii)-(iv), (e)(iii). The response should include (1) a copy of the request for correction or limitation filed with the International Bureau and (2) a request to suspend action on the application, which will normally be granted under such circumstances. See TMEP §§716.02(g), 1904.02(c)(iii)-(iv).
Suggested Amendments
Applicant may adopt the following suggested amendments, if accurate:
Class
3: Beauty care cosmetics; cosmetic soaps; perfumery; essential oils; cosmetic massage gels, fluids and oils for enhancing sexual stimulation
Class 5: Pharmaceutical preparations for {specify disease or condition to be prevented or treated or the health goal to be achieved}; disinfectants; health care products in the nature of medicinal preparations for {specify disease or condition to be prevented or treated or the health goal to be achieved}; potency-enhancing preparations being pharmaceutical preparations for enhancing sexual arousal; household deodorants; medical sexual aids being pharmaceutical preparations for enhancing sexual arousal; lubricant gel being gels for use as personal lubricant; orgasm creams; orgasm sprays and orgasm gels being topical preparations for enhancing sexual arousal; aphrodisiacs in the nature of sexual stimulant gels, sprays, and creams; personal sexual lubricants; contraceptive preparations in the nature of creams and suppositories; medical preparations for increasing physical sexual invigoration and for increasing sexual potency
Class 10: Vibro-massagers being massage apparatus; hygienic rubber goods being contraceptive apparatus; condoms; adult sexual stimulation aids for increasing sexual stimulation, namely, {indicate type, e.g., artificial penises, penis enlargers, vibrators, benwa balls, artificial vaginas, etc.}; massage apparatus for beauty care; mechanical contraceptive apparatus; massage apparatus; erotic apparatus and devices for immediate application to the body being adult sexual stimulation aids, namely, functioning representations of human body parts and sex organs, bullet-shaped vibrators, dildos, and penis rings
Class 18: Leather and imitation leather; whips
Class 25: Clothing, namely, {indicate specific articles of clothing}; sexy underwear; intimate wear, namely, {indicate specific articles of clothing}; clothing of lacquer, leather and imitations of leather, namely, {indicate specific articles of clothing}; footwear for women; men's shoes; headgear being headwear; bodysuits; ladies' underwear; men's underwear
Class 41: Entertainment services, namely, providing a web site featuring photographic, audio, video and prose presentations featuring adult-oriented content
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
AMENDMENT TO MARK DESCRIPTION REQUIRED
Applicant must submit a description of the mark. 37 C.F.R. §2.37; see TMEP §§808.01, 808.02. Applications for marks not in standard characters must include an accurate and concise description of the entire mark that identifies all the literal and design elements. See 37 C.F.R. §2.37; TMEP §§808 et seq. In this case, the drawing of the mark is not in standard characters.
Further, although applicant submitted a drawing showing the mark in color with a color claim, applicant did not provide the required description that specifies where each color appears in the literal and design elements in the mark. See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §807.07(a)-(a)(ii). Therefore, applicant must provide this description. See TMEP §807.07(a)(ii).
Generic color names must be used to describe the colors in the mark, e.g., red, yellow, blue. TMEP §807.07(a)(i)-(ii). If black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark, applicant must so specify in the description. See TMEP §807.07(d).
The following description is suggested, if accurate:
The mark consists of the stylized wording “XVIDEOS”. The letter “X” appears in red, while the word “VIDEOS” appears in white. All of the forgoing elements appear inside of a black rectangle.
U.S. LICENSED ATTORNEY REQUIRED
Applicant must be represented by a U.S.-licensed attorney at the USPTO to respond to or appeal the provisional refusal. An applicant whose domicile is located outside of the United States or its territories is foreign-domiciled and must be represented at the USPTO by an attorney who is an active member in good standing of the bar of the highest court of a U.S. state or territory. 37 C.F.R. §§2.11(a), 11.14; Requirement of U.S.-Licensed Attorney for Foreign-Domiciled Trademark Applicants & Registrants, Examination Guide 4-19, at I.A. (Rev. Sept. 2019). An individual applicant’s domicile is the place a person resides and intends to be the person’s principal home. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. A juristic entity’s domicile is the principal place of business; i.e., headquarters, where a juristic entity applicant’s senior executives or officers ordinarily direct and control the entity’s activities. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. Because applicant is foreign-domiciled, applicant must appoint such a U.S.-licensed attorney qualified to practice under 37 C.F.R. §11.14 as its representative before the application may proceed to registration. 37 C.F.R. §2.11(a). See Hiring a U.S.-licensed trademark attorney for more information.
Only a U.S.-licensed attorney can take action on an application on behalf of a foreign-domiciled applicant. 37 C.F.R. §2.11(a). Accordingly, the USPTO will not communicate further with applicant about the application beyond this Office action or permit applicant to make future submissions in this application. And applicant is not authorized to make amendments to the application.
To appoint or designate a U.S.-licensed attorney. To appoint an attorney, applicant should submit a completed Trademark Electronic Application System (TEAS) Change Address or Representation form. The newly-appointed attorney must submit a TEAS Response to Examining Attorney Office Action form indicating that an appointment of attorney has been made and address all other refusals or requirements in this action, if any. Alternatively, if applicant retains an attorney before filing the response, the attorney can respond to this Office action by using the appropriate TEAS response form and provide his or her attorney information in the form and sign it as applicant’s attorney. See 37 C.F.R. §2.17(b)(1)(ii).
RESPONSE GUIDELINES
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
How to respond. Click to file a response to this nonfinal Office action.
/Anna C. Burdecki/
Anna C. Burdecki
Examining Attorney
Law Office 108
(571) 270-1941
anna.burdecki@uspto.gov
RESPONSE GUIDANCE