UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

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: 7/28/2011

 

This Office action is in response to applicant’s communication filed on July 7, 2011.

 

Registration was initially refused on the grounds that the term PT is descriptive of the applciant’s’ physical training services.  Pursuant to See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).  The applicant was informed that under Trademark Act Section 2(e)(1) because the applied-for mark is merely descriptive of applicant’s goods and/or services.  15 U.S.C. §1052(e)(1). Applicant amended the application to assert acquired distinctiveness based on five years’ use in commerce.  However, this claim is unacceptable.  The examining attorney has determined the following.

 

TERM “PT” IS GENERIC

Registration is now refused because the literal portion of the applied-for mark is generic for applicant’s services.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(c) et seq., 1209.02(a)(ii).  Thus, applicant’s claim of acquired distinctiveness under 15 U.S.C. §1052(f) is insufficient to overcome the refusal because no amount of purported proof that a generic mark has acquired secondary meaning can transform it into a registrable trademark.  See In re Bongrain, 894 F.2d 1316, 1317 n.4, 13 USPQ2d 1727, 1728 n.4 (Fed. Cir. 1990); H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 989, 228 USPQ 528, 530 (Fed. Cir. 1986); TMEP §1212.02(i).  Such a designation cannot become a trademark under any circumstances. 

 

A two-part test is used to determine whether a designation is generic:

 

(1)        What is the class or genus of goods and/or services at issue?; and

 

(2)        Does the relevant public understand the designation primarily to refer to that class or genus of goods and/or services?

 

In re 1800Mattress.com IP LLC, 586 F. 3d 1359, 1363, 92 USPQ2d 1682, 1684 (Fed. Cir. 2009)(quoting H. Marvin Ginn Corp., 782 F.2d at 990, 228 USPQ at 530); TMEP §1209.01(c)(i).

 

In the first Office action, the examining attorney made of record evidence which shows that the acronym “PT” in the mark means physical training.  The identification is “Personal training services, namely, physical fitness consultation to individuals to help them make physical fitness, strength, conditioning, and exercise improvement in their daily living; sports performance training services, featuring sport specific skills training and speed and endurance training”; therefore, the genus or class for the identified services is physical training.  The acronym “PT” in the mark is essentially the apt name for the class or genus of the services.  The relevant public would understand this designation to refer primarily to that class or genus of services because the term “PT” is commonly used in the physical training industry.  The examining attorney has attached a copy of the first page of the U.S. Army’s Physical Training Guide.  Please see attachment.  This guide is prefaced with the following information. 

 

Within this Physical Training (PT) Guide, you'll find the conditioning and movement drills, stretching techniques and information about nutrition.

 

Furthermore, the examining attorney has attached a copy of the Navy Seals website which states the following.  “For SEALs, and other military professionals, Physical Training (PT) takes on a very different perspective than what is commonly found at your local gym.”  Please see attachment.  The examining attorney has attached a copy of the Reality Ranch Military Camp website which explains that “[r]ecuits participate in daily physical training (PT) sessions conducted each morning.”  Please see attachment.    

 

Finally, the examining attorney has attached an article from the U.S. National Library of Medicine National Institutes of Health entitled Physical training improves insulin resistance syndrome markers in obese adolescents.  This article has the following introduction.

 

The purpose of this study was to test the hypothesis that physical training (PT), especially high-intensity PT, would have a favorable effect on components of the insulin resistance syndrome (IRS) in obese adolescents. 

 

In the alternative, if the applied-for mark is ultimately determined not to be generic by an appellate tribunal, then the refusal of registration because the applied-for mark is merely descriptive of applicant’s goods and/or services is maintained and continued for the reasons specified in the previous Office action.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

 

In any event, applicant’s claim of acquired distinctiveness is in effect a concession that the mark sought to be registered is merely descriptive of applicant’s goods and/or services.  In re Leatherman Tool Group, Inc., 32 USPQ2d 1443, 1444 (TTAB 1994).

 

With respect to applicant’s claim of acquired distinctiveness, the following evidence was provided in support of such claim:  a claim of five years use.  See 37 C.F.R. §2.41.

 

The amount and character of evidence needed to establish acquired distinctiveness depends on the facts of each case and particularly on the nature of the mark sought to be registered.  Roux Labs., Inc. v. Clairol Inc., 427 F.2d 823, 829, 166 USPQ 34, 39 (C.C.P.A. 1970); see In re Hehr Mfg. Co., 279 F.2d 526, 126 USPQ 381 (C.C.P.A. 1960); TMEP §1212.05(a).  More evidence is generally required if purchasers seeing the applied-for mark in relation to the identified goods and/or services would be less likely to believe that it indicates source in any one party.  See, e.g., In re Bongrain Int’l Corp., 894 F.2d 1316, 13 USPQ2d 1727; In re Seaman & Assocs., Inc., 1 USPQ2d 1657 (TTAB 1986).  

 

If the applied-for mark is ultimately determined to be merely descriptive and not generic, the Section 2(f) evidence is insufficient because it does not establish acquired distinctiveness.

 

DISCLAIMER

The applicant may overcome this refusal to register by entering a disclaimer of the term “PT.”

 

The computerized printing format for the Office’s Trademark Official Gazette requires a standardized format for a disclaimer.  TMEP §1213.08(a)(i).  The following is the standard format used by the Office:

 

No claim is made to the exclusive right to use “PT” apart from the mark as shown.

 

See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §2.191; TMEP §§709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

Applicant is encouraged to telephone the assigned trademark examining attorney to resolve the issues raised in this Office action.

 

 

 

 

 

 

 

 

/Geoffrey Fosdick/

Geoffrey Fosdick

Trademark Attorney

Trademark Office 111

(571) 272-9161

geoffrey.fosdick@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 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 Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/.  Please keep a copy of the complete TARR screen.  If TARR shows no change for more than six months, 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/teas/eTEASpageE.htm.

 

 

 

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION HAS ISSUED ON 7/28/2011 FOR

SERIAL NO. 85254397

 

Please follow the instructions below to continue the prosecution of your application:

 

 

TO READ OFFICE ACTION: Click on this link or go to http://portal.gov.uspto.report/external/portal/tow and enter the application serial number to access the Office action.

 

PLEASE NOTE: The Office action may not be immediately available but will be viewable within 24 hours of this e-mail notification.

 

RESPONSE IS REQUIRED: You should carefully review the Office action to determine (1) how to respond; and (2) the applicable response time period. Your response deadline will be calculated from 7/28/2011 (or sooner if specified in the office action).

 

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System Response Form.

 

HELP: For technical assistance in accessing the Office action, please e-mail

TDR@uspto.gov.  Please contact the assigned examining attorney with questions about the Office action. 

 

        WARNING

 

Failure to file the required response by the applicable deadline will result in the ABANDONMENT of your application.