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.  A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.

 

 

ISSUE/MAILING DATE: 7/5/2017

 

This Office action responds to applicant’s correspondence dated May 10, 2017.  The application was abandoned for the second time on January 23, 2017.  Applicant has revived the application and, in response to the final Office action issued on June 6, 2016, has filed an allegation of use rather than a request for reconsideration.  Since applicant’s allegation of use has been submitted following issuance of a final Office action, it will be treated as a request for reconsideration. See §715.01.

 

The following refusal(s) and requirement(s) is/are continued and maintained: 1) refusal pursuant to Trademark Act Section 2(e)(1); 2) requirement for an amended drawing and/or mark description and color claim.

 

The following new refusal(s) and/or requirement(s) apply.

 

REGISTRATION REFUSED PURSUANT TO TRADEMARK ACT SECTIONS 2(e)(1) – GENERIC

 

Registration was refused pursuant to Trademark Act Section on the grounds that the mark is descriptive.  Applicant has filed an allegation of use and proposed an amendment to the Supplemental Register with its previous disclaimer of the exclusive rights to the wording “premium apparel.”

 

Registration is refused on the Supplemental Register because the applied-for mark is generic and thus incapable of distinguishing applicant’s goods.  Trademark Act Sections 23(c) and 45, 15 U.S.C. §§1091(c), 1127; see TMEP §§1209.01(c) et seq.

 

A generic term is a common name that the relevant public uses or understands primarily as referring to the category or genus of the goods and/or services in question.  In re Nordic Naturals, Inc., 755 F.3d 1340, 1342, 111 USPQ2d 1495, 1497 (Fed. Cir. 2014); 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); see TMEP §1209.01(c).  Generic terms are by definition incapable of indicating a particular source of goods and/or services and cannot be registered as trademarks or service marks.  In re Cordua Rests., Inc., 823 F.3d 594, 599, 118 USPQ2d 1632, 1634 (Fed. Cir. 2016) (quoting In re Merrill Lynch, Pierce, Fenner, & Smith, Inc., 828 F.2d 1567, 1569, 4 USPQ2d 1141, 1142 (Fed. Cir. 1987)); see TMEP §1209.01(c).  Registering generic terms “would grant the owner of [a] mark a monopoly, since a competitor could not describe his goods as what they are.”  In re Merrill Lynch, Pierce, Fenner, & Smith, Inc., 828 F.2d at 1569, 4 USPQ2d at 1142.

 

Terms that identify the provider of a product or service may also be generic of the product and/or service.  See In re Wm. B. Coleman Co., 93 USPQ2d 2019, 2025 (TTAB 2010) (holding ELECTRIC CANDLE COMPANY generic for lighting fixtures); In re The Paint Prods. Co., 8 USPQ2d 1863, 1865 (TTAB 1988) (holding PAINT PRODUCTS CO. generic for paint); In re E. I. Kane, Inc., 221 USPQ 1203, 1205 (TTAB 1984) (holding OFFICE MOVERS, INC. generic for moving services); TMEP §1209.03(q).

 

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 Cordua Rests., Inc., 823 F.3d 594, 599, 118 USPQ2d 1632, 1634 (Fed. Cir. 2016) (citing H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 990, 228 USPQ 528, 530 (Fed. Cir. 1986)); TMEP §1209.01(c)(i). 

 

Regarding the first part of the inquiry, the genus of the goods and/or services may be defined by an applicant’s identification of goods and/or services.  See In re Cordua Rests., Inc., 823 F.3d at 602, 118 USPQ2d at 1636 (citing Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 640, 19 USPQ2d 1551, 1552 (Fed. Cir. 1991)); see also In re 1800Mattress.com IP, LLC, 586 F.3d 1359, 1361, 1363, 92 USPQ2d 1682, 1682, 1684 (Fed. Cir. 2009).   

 

In this case, the application identifies the goods and/or services as various types of clothing.  As the evidence of record shows, the wording “premium apparel” describes a type of clothing that is typically of better quality and often higher priced than average clothing. 

 

The attached dictionary definition from American Heritage Dictionary shows that the word “crafter” refers generally to one or makes or constructs, especially with particular care or ingenuity.  The attached third-party Internet evidence further shows that the word “crafter” is used to refer to a person or entity that manufactures clothing, especially but not limited to clothing made with care, custom-made clothing, clothing made in smaller than usual batches, and clothing of a particular quality or character.  This evidence includes pages from the following Internet sites:

 

http://www.actinsurance.com/clothing-apparel-insurance, (“Clothiers are just some of the crafters elligible for ACT”)

http://cityworkshopmsc.com/collections/p-a-c-premium-apparel-crafters, (“premium apparel crafters”)

http://pennsylvaniaenterprises.com/apparel-crafters-inc.766535.company.v2

http://www.forbes.com/2009/01/22/cpsia-waxman-cpsc-oped-cx_wo_0122olson.html, “imposing the full force of the law on most apparel crafters (who would still have to go on testing all 10 fabric components of the paneled sweater because of its solitary plastic button).”)

http://www.canoekayak.com/gear/nrs-crush-water-shoe/#jmaVo2yHVkzsL0Wt.97, “paddle-apparel crafters”)

http://www.facebook.com/Veteranknitsapparel/ http://twicsy.com/i/HbeVT, (“Artistic Urbanite Apparel Crafters" from Atlanta, GA”)

http://shop.craftersforlife.com/collections/apparel

http://www.zazzle.ca/crafters+mens+clothing

http://opencorporates.com/companies/us_ky/0235465

http://www.facebook.com/usinedesfous/about/

http://www.craft-e-corner.com/ecomcatalog/iframe/index/id/27022/, (“Perfect for apparel crafters and quilters alike”)

http://www.foxtrotter.org/apparel/, (“From the beginning, we have partnered with outstanding apparel crafters…”)

http://www.overlawyered.com/2009/02/cpsia-chronicles-february-5/, (“…were to appear from wooden toymakers in New England, from apparel crafters in New York City’s garment district”)

http://archive.org/stream/AntiochNews08302002/2002-08-30_djvu.txt, “Additionally; we have new apparel crafters and holiday d6cor crafters")

http://coreldrawhelpnews.com/stahls-tv-releases-fourth-quarter-class-schedule/, (“Apparel Crafters, Turn Your Hobby Into a Full-Time Business, December 10, 2 – 2:45 p.m. EST”)

http://forums.elderscrollsonline.com/de/discussion/130530/downfall, (“I have 6 traits or better across both my apparel crafters now and I have to buy the odd item”)

http://www.spokesman.com/stories/2013/jul/24/store-finds-niche-with-crafters-of-native/#/0, (“Store finds niche with crafters of Native American clothing”)

http://tiecrafters.com/, (“tie crafters”)

http://violetastray.com/bdo-craftable-life-clothing/, (“Guide to Crafting Clothes”).

 

This evidence shows that the word “crafter” is frequently used together with the word “apparel” or “clothing” to refer to a manufacturer of clothing.  The combination of the wording “premium apparel” and “crafter” does not diminish the descriptive significance of either wording as a reference to a manufacturer of a particular type of clothing.  Thus, the genus of the goods is “premium apparel crafter.”

 

Regarding the second part of the inquiry, the relevant public is the purchasing or consuming public for the identified goods and/or services.  Sheetz of Del., Inc. v. Doctor’s Assocs. Inc., 108 USPQ2d 1341, 1351 (TTAB 2013) (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 goods because there are no restrictions or limitations to the channels of trade or classes of consumers.  The attached Internet evidence shows that the wording “premium apparel crafters” in the applied-for mark means a manufacturer of clothing that is high in price and/or superior in one or more qualities, and thus the relevant public would understand this designation to refer primarily to that genus of goods because it refers to the type of manufacturer of the goods.

 

Therefore, based on the evidence of record, the applied-for mark is generic for applicant’s goods and thus, incapable of distinguishing the goods, and registration is refused on the Supplemental Register in accordance with the Trademark Act.  Trademark Act Sections 23(c) and 45, 15 U.S.C. §§1091(c), 1127; see TMEP §§1209.01(c) et seq.

 

 

If applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

 

AMENDED DRAWING AND/or AMENDED MARK DESCRIPTION AND COLOR CLAIM REQUIRED

 

Applicant did not respond to the requirement for an amended mark drawing and/or mark description and color claim.  Therefore, this requirement is continued and maintained as follows.

 

The drawing shows the mark only in black and white or gray; however, applicant has claimed the colors red and blue as a feature of the mark and has provided a description of the mark that references colors.  The USPTO does not accept a black-and-white drawing when an applicant has claimed color as a feature of the mark.  TMEP §807.07(a); see 37 C.F.R. §2.52(b)(1).  Applications for marks depicted in color must include (1) a drawing showing the mark in color, (2) a complete list of all the colors claimed as a feature of the mark, and (3) a description of the literal and design elements in the mark that specifies where all the colors appear in those elements.  37 C.F.R. §§2.37, 2.52(b)(1); see TMEP §807.07(a)-(a)(ii).

 

Amending a mark to delete color is permitted only if the change would not materially alter the mark.  See 37 C.F.R. §2.72; TMEP §807.14.  In the present case, color is not material to the commercial impression of the mark; however, any other amendments to the applied-for mark will not be accepted if the changes would materially alter the mark.  37 C.F.R. §2.72; see TMEP §§807.07(e), 807.14 et seq.

 

Therefore, applicant must clarify whether color is a feature of the mark by satisfying one of the following: 

 

(1)  If color is not a feature of the mark, applicant must submit (a) a statement that color is not a feature of the mark and (b) an accurate and concise description of the literal and design elements in the mark, omitting any reference to color.  See 37 C.F.R. §2.37; TMEP §§808.01, 808.02.  The following mark description is suggested, if accurate: 

 

The mark consists of the uppercase wording PREMIUM APPAREL CRAFTERS arranged vertically.

 

(2)  If color is a feature of the mark, applicant must (a) submit a substitute color drawing that agrees with the colors in the color claim, (b) ensure that the color claim lists all the colors that are claimed as a feature of the mark, and (c) submit a statement describing the literal and design elements in the mark that specifies where all the colors appear in those elements.  37 C.F.R. §§2.37, 2.52(b)(1); see TMEP §807.07(a)-(a)(ii).  Generic color names must be used to describe the colors in the mark, e.g., magenta, yellow, turquoise.  TMEP §807.07(a)(i)-(ii).  If black, white, and/or gray are not being claimed as a color feature of the mark, applicant must exclude these from the color claim and include in the mark description a statement that the colors black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark.  See TMEP §807.07(d).  The following color claim and mark description are suggested, if accurate: 

 

Color claim:  “The colors ______ and _______ are claimed as a feature of the mark.”

 

Mark description:  “The mark consists of the uppercase wording PREMIUM APPAREL CRAFTERS arranged vertically, with the word ___ is red, the ____ is blue… [continue specifying each  literal or design element and its color accordingly]

 

TMEP §807.07(e).

REQUIREMENT FOR ADDITIONAL INFORMATION

 

The applicant must respond to the following questions for the application record:

1)    What is the meaning and significance of the wording “crafter” in relation to applicant’s goods?

2)    Does the applicant produce customized clothing or clothing that is modified to suit particular customers?

a.     If so, please explain and provide examples.

3)    Are applicant’s goods made in small batches relative to the amounts typically made in its industry?

a.     If so, please explain and provide examples.

4)    Are applicant’s goods higher in price on average relative to competing goods?

a.     If so, please explain.

5)    Are applicant’s goods higher in quality on average compared to competing goods?

a.     If so, please explain.

6)    What is the meaning and significance of the wording “premium” in relation to applicant’s goods?

7)    Please explain in general the process by which applicant’s goods are manufactured and the type(s) of tools or machinery used, if any.

 

This information is necessary to evaluate accurately and fully the registrability of the applicant’s proposed designation. 37 C.F.R. Section 2.61(b); TMEP Section 814.  If the applicant does not provide the information required herein, registration may be refused.  The Trademark Rules of Practice have the effect of law and failure to comply with a request for information is grounds for refusal of registration.  See, e.g., In re Joseph Edward Page, 1999 TTAB LEXIS 229 (TTAB 1999); In re Babies Beat, Inc., 13 USPQ2d 1729 (TTAB 1990); In re Big Daddy's Lounges, Inc., 200 USPQ 371 (TTAB 1978); In re Air Products and Chemicals, Inc., 192 USPQ2d 84, 85-86 (TTAB 1976); and In re Morrison Industries, Inc., 178 USPQ 432, 433-34 (TTAB 1973).   

 

By presenting to the Office any paper, including a response, the practitioner is certifying that all statements made therein of the party’s own knowledge are true and are, to the best of the party's knowledge, information and belief, formed after an inquiry reasonable under the circumstances, made with the knowledge that any practitioner who knowingly and willfully falsifies, conceals, or covers up by any trick, scheme, or material fact, or knowingly and willfully makes any false, fictitious, or fraudulent statements or representations, or knowingly and willfully makes or uses any false writing or document knowing the same to contain any false, fictitious, or fraudulent statement or entry, shall be subject to the penalties set forth under 18 U.S.C. 1001 and any other applicable criminal statute, and violations of the provisions of this section may jeopardize the probative value of the paper.  See 37 CFR 11.18(b)(2). 

 

RESPONSE GUIDELINES

 

There is no required format or form for responding to an Office action.  The Office recommends applicants use the Trademark Electronic Application System (TEAS) to respond to Office actions online at http://www.gov.uspto.report/teas/index.html.  However, if applicant responds on paper via regular mail, the response should include the title “Response to Office Action” and the following information:  (1) the name and law office number of the examining attorney, (2) the serial number and filing date of the application, (3) the mailing date of this Office action, (4) applicant’s name, address, telephone number and e-mail address (if applicable), and (5) the mark.  37 C.F.R. §2.194(b)(1); TMEP §302.03(a).

 

The response should address each refusal and/or requirement raised in the Office action.  If a refusal has issued, applicant can argue against the refusal; i.e., applicant can submit arguments and evidence as to why the refusal should be withdrawn and the mark should register.  To respond to requirements, applicant should set forth in writing the required changes or statements and request that the Office enter them into the application record.

 

E-mail may not be used to file responses to Office actions.  These documents may be filed electronically using TEAS.  TMEP § 304.02.  Further, e-mail may not be used to request an advisory opinion as to the likelihood of overcoming a refusal or requirement. 

 

 

TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application.  See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820.  TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.  However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.  

 

 

 

/efennessy/

Edward Fennessy

Examining Attorney, Law Office 114

571-272-8804

Edward.Fennessy@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 7/5/2017 FOR U.S. APPLICATION SERIAL NO. 86633910

 

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 7/5/2017 (or sooner if specified in the Office action).  A response transmitted through the Trademark Electronic Application System (TEAS) must be received before midnight Eastern Time of the last day of the response period.  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 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.