To: | KSIN Luxembourg II, S.ar.l. (ipdocket@calfee.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 86715425 - MADE FOR SEWERS. BY SEWERS - 25536/04426 |
Sent: | 11/17/2015 8:47:54 PM |
Sent As: | ECOM115@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 86715425
MARK: MADE FOR SEWERS. BY SEWERS
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: KSIN Luxembourg II, S.ar.l.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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: 11/17/2015
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SEARCH RESULTS
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods. TMEP §1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)).
In this case, the applicant has applied to register MADE FOR SEWERS. BY SEWERS (Standard Characters) for “Embroidery machines; Sergers; Sewing machines” in Class 7 and for “Computer software for controlling the operation of sewing machines” in Class 9.
The wording “MADE FOR SEWERS.” describes the intended users of the applicant’s goods, namely, people who sew. See the attached excerpt from http://www.ahdictionary.com/word/search.html?q=sewer for the definition of “sewer” when used in conjunction with the activity of sewing. Wording that describes an intended user or group of users of a product is merely descriptive. E.g., In re Planalytics, Inc., 70 USPQ2d 1453 (TTAB 2004) (holding GASBUYER merely descriptive of intended user of risk management services in the field of pricing and purchasing natural gas); In re Camel Mfg. Co., 222 USPQ 1031 (TTAB 1984) (holding MOUNTAIN CAMPER merely descriptive of intended users of retail and mail order services in the field of outdoor equipment and apparel); see TMEP §1209.03(i).
The wording “BY SEWERS” describes the providers of the goods, namely, people who sew. Terms that describe the provider of a product may also be merely descriptive of the product. See In re Major League Umpires, 60 USPQ2d 1059, 1060 (TTAB 2001) (holding MAJOR LEAGUE UMPIRE merely descriptive of clothing, face masks, chest protectors and shin guards); TMEP §1209.03(q).
When descriptive terms are combined, the determination of whether the composite mark also has a descriptive significance turns upon the question of whether the combination of terms evokes a new and unique commercial impression. TMEP §1209.03(d). If each component retains its descriptive significance in relation to the goods, as is the case here, the combination results in a composite that is itself descriptive. Duopross Meditech Corp. v. Inviro Medical Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753 (Fed. Cir. 2012); In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370 (Fed. Cir. 2004); In re Gould Paper Corp., 834 F.2d 1017, 1018, 5 USPQ2d 1110, 1111–1112 (Fed. Cir. 1987).
Section 1(b) Applications NOT Eligible for Registration on the Supplemental Register
If applicant files an acceptable allegation of use and also amends to the Supplemental Register, the effective filing date of the application will be the date on which applicant met the minimum filing requirements of 37 C.F.R. §2.76(c) for the amendment to allege use. 37 C.F.R. §2.75(b); TMEP §§816.02, 1102.03. In addition, the undersigned trademark examining attorney will conduct a new search of the USPTO records for conflicting marks based on the later application filing date. TMEP §§206.01, 1102.03.
Advisory Regarding Domestic Representative
Because this is a TEAS Plus application, the applicant must file a designation of domestic representative form online using the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.
A designation of domestic representative must be personally signed or include an electronic signature personally entered by the individual applicant, someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner), or an authorized attorney. 37 C.F.R. §§2.24(a)(1)(ii), 2.193(a), (e)(8); TMEP §610. In the case of joint applicants, all must sign. 37 C.F.R. §2.193(e)(8); TMEP §610.
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 $50 per international 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 without incurring this additional fee.
If the applicant has any questions or needs assistance in responding to this Office action, please call the assigned examining attorney.
A prompt response to this Office action will expedite the handling of this matter.
/Barbara A. Gaynor/
Trademark Examining Attorney
Law Office 115
571-272-9164
Barbara.gaynor@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.