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: 5/12/2015

 

This application was approved for publication on 03/06/2015.  See 37 C.F.R. §2.80.  However, approval of the application has been withdrawn to address the issue(s) below.  See TMEP §706.01.  The trademark examining attorney apologizes for any inconvenience this may cause applicant.

 

Regarding the Section 2(f) claim:  The wording, SPONSORSHIP REPORT, appears to be so highly descriptive as to identify a genus of marketing reports, namely, SPONSORSHIP REPORTs.  Thus, the claim of acquired distinctiveness and partial disclaimer of REPORT is improper, and the unitary wording SPONSORSHIP REPORT should have been disclaimed.  See attached web pages from :

 

http://www.delightfullabor.com/u   serGuide/index.php/reports/sponsorship-reports

 

“Sponsorship Analyses & Reports”

http://orangepeelpr.com/sponsorship_services.html

 

“NOWCastSA Sponsorship Reports”

http://www.scribd.com/collections/4261396/NOWCastSA-Sponsorship-Reports

 

“Europe's most critically acclaimed sponsorship report includes 40 case studies and detailed practical advice on how to maximise sponsorship programmes.”

See www.imrpublications.com/.

 

DISCLAIMER REQUIRED

Applicant must disclaim the wording “SPONSORSHIP REPORT” because it is a generic designation for applicant’s goods and/or services and is thus an unregistrable component of the mark.  See 15 U.S.C. §§1056(a), 1091(c); In re Water Gremlin Co., 635 F.2d 841, 845 n.6, 208 USPQ 89, 91 n.6 (C.C.P.A. 1980) (citing In re Wella Corp., 565 F.2d 143, 144, 196 USPQ 7, 8 (C.C.P.A. 1977)); TMEP §1213.03(b). 

 

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). 

 

Regarding the first part of the inquiry, the genus of goods and/or services is often defined by an applicant’s identification of goods and/or services.  See In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 (TTAB 2014) (citing Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 640, 19 USPQ2d 1551, 1552 (Fed. Cir. 1991)). 

 

In this case, the identification, and thus the genus, is “Non-downloadable electronic publications in the nature of newsletters and reports in the field of sponsorship marketing; providing an Internet website featuring non-downloadable electronic publications in the nature of newsletters and reports in the field of sponsorship marketing.” 

 

Regarding the second part of the inquiry, the relevant public is the purchasing or consuming public for the identified goods and/or 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, the relevant public comprises ordinary consumers who purchase applicant’s services, because there are no restrictions or limitations to the channels of trade or classes of consumers.  The attached evidence shows that the wording “SPONSORSHIP REPORT” in the applied-for mark means a report in the field of sponsorship marketing and thus the relevant public would understand this designation to refer primarily to the genus of services because consumers often encounter the category of sponsorship reports.

 

All generic names of a product or service are not registrable and belong in the public domain for competitors to use.  See In re Women’s Publ’g Co., 23 USPQ2d 1876, 1877 (TTAB 1992) (citing In re Sun Oil Co., 426 F.2d 401, 404, 165 USPQ 718, 719 (C.C.P.A. 1970) (Rich, J., concurring)).  A disclaimer of unregistrable matter does not affect the appearance of the mark; that is, a disclaimer does not physically remove the disclaimed matter from the mark.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 978, 144 USPQ 433, 433 (C.C.P.A. 1965); TMEP §1213. 

 

If applicant does not provide the required disclaimer, the USPTO may refuse to register the entire mark.  See In re Stereotaxis Inc., 429 F.3d 1039, 1040-41, 77 USPQ2d 1087, 1088-89 (Fed. Cir. 2005); TMEP §1213.01(b).

 

Applicant should submit a disclaimer in the following standardized format:

 

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

 

For an overview of disclaimers and instructions on how to satisfy this disclaimer requirement online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/disclaimer.jsp.

 

The applicant must withdraw the Section 2(f) acquired distinctiveness claim.

 

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. §§2.62(c), 2.191; TMEP §§304.01-.02, 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.

 

 

 

 

 

/Tracy Cross/

Examining Attorney

Law Office 109

(571) 272-9271

Tracy.Cross@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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 5/12/2015 FOR U.S. APPLICATION SERIAL NO. 86142914

 

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 5/12/2015 (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.