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: 6/25/2015

This Office action is in response to applicant’s communication filed on April 14, 2015.

Registration is refused on the Supplemental Register because the applied-for mark is generic of a feature of the services and thus incapable of distinguishing applicant’s services.  Trademark Act Section 23(c), 15 U.S.C. §1091(c); see TMEP §§1209.01(c) et seq.

The applicant is applying to register the mark SURROUND VISION in standard characters in connection with “Cinema theater facilities; cinema theaters; providing facilities for movies; movie theaters; movie showing; arranging, conducting and organizing exhibition of movies and shows for entertainment purposes.

As the attached Internet evidence reflects, the term “surround vision” references a specific visual technology utilized in television, cinema and computer screens whereby the viewer watches more than what is right in front of them and experiences immersive viewing of media.  Determining whether a mark is generic requires a two-step inquiry:

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

(2)        Does the relevant public understand the designation primarily to refer to that 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. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 989-90, 228 USPQ 528, 530 (Fed. Cir. 1986)); TMEP §1209.01(c)(i). 

The genus of services are cinema theaters.  Regarding the second part of the inquiry, the relevant public is the purchasing or consuming public for the identified services.  Frito-Lay N. Am., Inc. v. Princeton Vanguard, LLC, 109 USPQ2d 1949, 1952 (TTAB 2014) (citing Magic Wand Inc. v. RDB Inc., 940 F.2d at 640, 19 USPQ2d at 1553).  In this case, and similar to “surround sound” whereby the relevant movie-going public is familiar with the concept of sound immersion, the relevant public understands surround vision to be a similar visual immersion experience, just as  surround sound is an immersive sound experience. 

Evidence of the public’s understanding that a designation primarily refers to the genus of specific goods and/or services may be obtained from any competent source, such as dictionaries, trade journals, magazines, catalogs, newspapers, and other publications.  See In re Merrill Lynch, Pierce, Fenner, & Smith, Inc., 828 F.2d 1567, 1570, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987); In re Northland Aluminum Prods., Inc., 777 F.2d 1556, 1559, 227 USPQ 961, 963 (Fed. Cir. 1985).  In addition, material obtained from third-party Internet websites is generally accepted as competent evidence.  See In re Country Music Ass’n, 100 USPQ2d 1824, 1829 (TTAB 2011); TBMP §1208.03; TMEP §710.01(b).  Further, research databases such as LEXIS/NEXIS® are also considered a source of competent evidence.  See In re Leatherman Tool Grp., Inc., 32 USPQ2d 1443, 1449 (TTAB 1994); In re Analog Devices Inc., 6 USPQ2d 1808, 1810 (TTAB 1988); TMEP §1209.01(c)(i).  See attached Internet cites reflecting generic use of the term “SURROUND VISION” as a technological feature of showing films and other media for various types of screens. See also applicant’s specimen submitted April 14, 2015 which reflects the term “surround vision” shown on the screen similar to “surround sound” displaying the technical features of the film.  The specimen in this case does not reflect the services, but rather, a feature of the services – that the theater is showing films that have incorporated “surround vision” technology. 

Accordingly, registration is refused on the Supplemental Register.

/CarynGlasser/

Trademark Examining Attorney

Law Office 108

Phone:  (571) 270-1517

Fax:  (571)-270-2517

caryn.glasser@usp

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.

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 6/25/2015 FOR U.S. APPLICATION SERIAL NO. 86029226

Please follow the instructions below:

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

(2)  TIMELY RESPONSE IS REQUIRED:  Please 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 6/25/2015 (or sooner if specified in the Office action).  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

WARNING

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.