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: 8/8/2017

 

 

THIS IS A FINAL ACTION.

 

 

The Office has reassigned this application to the undersigned trademark examining attorney.

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on April 23, 2017.

 

In previous Office actions dated March 23, 2016 and October 23, 2016, the trademark examining attorney refused registration of the applied-for mark based on the following:  Section 2(e)(1) Refusal.  In addition, applicant was required to satisfy the following requirement:  Information About Goods Requirement, Requirement for Product Information.

 

Based on applicant’s response, the trademark examining attorney notes that the following requirement has been satisfied: Information About Goods Requirement, Requirement for Product Information.  See TMEP §§713.02, 714.04. 

 

Further, the trademark examining attorney maintains and now makes FINAL the refusal(s) and/or requirement(s) in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

• Section 2(e)(1) Refusal

 

SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE

 

Registration is refused because the applied-for mark merely describes a feature or purpose of applicant’s goods. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

 

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)).

 

Applicant has applied to register the mark “TiVi” in standard characters for “Computer application software for mobile phones, namely, software for authoring, sharing, storing, organizing, editing, encoding and decoding audio, video and multimedia content; Computer game software for use on mobile and cellular phones; Downloadable multimedia file containing artwork, text, audio, video, games, and Internet Web links relating to sports, news, entertainment, and cultural activities; Downloadable software in the nature of a mobile application for authoring, sharing, storing, organizing, editing, encoding and decoding audio, video and multimedia content.”

 

Applicant’s mark is merely descriptive because the wording in the mark describes a feature of the software, i.e., that the software allows a user to watch tv.

 

As a primary matter, a novel spelling or an intentional misspelling that is the phonetic equivalent of a merely descriptive word or term is also merely descriptive if purchasers would perceive the different spelling as the equivalent of the descriptive word or term. See In re Hercules Fasteners, Inc. , 203 F.2d 753, 97 USPQ 355 (C.C.P.A. 1953) (holding “FASTIE,” phonetic spelling of “fast tie,” merely descriptive of tube sealing machines); Andrew J. McPartland, Inc. v. Montgomery Ward & Co. , 164 F.2d 603, 76 USPQ 97 (C.C.P.A. 1947) (holding “KWIXTART,” phonetic spelling of “quick start,” merely descriptive of electric storage batteries); In re Carlson , 91 USPQ2d 1198 (TTAB 2009) (holding “URBANHOUZING” phonetic spelling of “urban” and “housing,” merely descriptive of real estate services); In re State Chem. Mfg. Co. , 225 USPQ 687 (TTAB 1985) (holding “FOM,” phonetic spelling of “foam,” merely descriptive of foam rug shampoo); TMEP §1209.03(j). Here, applicant’s mark “TIVI” is a novel misspelling and phonetic equivalent of the word “TV”. This supports the determination that the mark is merely descriptive.

 

“Whether consumers could guess what the product [or service] is from consideration of the mark alone is not the test.” In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985). The question is not whether someone presented only with the mark could guess what the goods are, but “whether someone who knows what the goods and[/or] services are will understand the mark to convey information about them.” DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012) (quoting In re Tower Tech, Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002)); In re Franklin Cnty. Historical Soc’y, 104 USPQ2d 1085, 1087 (TTAB 2012).

 

Here, a consumer who knows that applicant’s goods are software for viewing and broadcasting video content would understand the mark “TIVI” to describe a feature or purpose of the software, specifically, to play TV shows. See attached dictionary evidence defining “TV” as “television” and defining television “video content, especially short programs, created for or distributed through such a system: stayed home and watched television.” (Emphasis added).  In the context of applicant’s recited software for playing videos, this evidence supports the argument that the mark “TV” merely describes that a feature of the software is to play video content.  In the context of applicant’s response to the previously issued Request for Information, it merely describes that a feature of the software is to broadcast “User generated short videos and audios.” (Emphasis added).

           

Additionally, the examining attorney has previously attached Internet evidence from third parties’ websites showing the term “TV” used descriptively in the context of software similar to applicant’s software. See attached evidence from directv.com and itunes.apple.com. This evidence supports the determination that the wording “TIVI” is merely descriptive of applicant’s recited goods. Terms that describe the function or purpose of a product or service may be merely descriptive. TMEP §1209.03(p); see, e.g., In re Hunter Fan Co., 78 USPQ2d 1474, 1477 (TTAB 2006) (holding ERGONOMIC merely descriptive of ceiling fans); In re Wallyball, Inc., 222 USPQ 87, 89 (TTAB 1984) (holding WALLYBALL merely descriptive of sports clothing and game equipment); In re Orleans Wines, Ltd., 196 USPQ 516, 517 (TTAB 1977) (holding BREADSPRED merely descriptive of jams and jellies).

 

Additionally, the newly attached internet evidence consisting of various websites describing the ability to broadcast video as “TV” shows that the wording is used descriptively in the market to describe goods and services highly similar to the goods identified by applicant.  See http://www.amazon.com/gp/video/offers/ref=dvm_us_dl_sl_go_brw%7Cc_163705074697_m_JgD9us5q-dc_s__?ie=UTF8&gclid=EAIaIQobChMIzMrQtOC41QIVWFYNCh1nAgq1EAAYASAAEgJKq_D_BwE and http://www.amazon.com/b/?rh=i%3Ainstant-video%2Cn%3A2858778011&ie=UTF8&node=2858778011&merchId=originals1&ref=dvm_us_dl_sl_go_brw|c_163705118329_m_GHVOU6Dn-dc_s_omt2Ua5M_&gclid=EAIaIQobChMIrpGgu-C41QIVg4KzCh1KZgxiEAAYASADEgJ0V_D_BwE (showing a business provide an app that allows users to view broadcast video content, including content created specifically for the program); and http://www.youtube.com/yt/devices/ and http://www.youtube.com/channel/UCqVDpXKLmKeBU_yyt_QkItQ and http://www.youtube.com/user/YouTubeShowsUS (same).

 

Therefore, considering all of the above, the mark “TIVI”, as applied to the identified goods, merely describes a feature or purpose of applicant’s goods. Accordingly, the applied-for mark is merely descriptive, and registration is refused on the Principal Register under Section 2(e)(1).

 

APPLICANT’S ARGUMENTS

 

Applicant, in response to the previously issued Request for Information, said that the “main feature and functionality of applicant’s software is for users to record a short video using their smart phones, edit it and share it with other users.”  In essence, applicant’s software exists to broadcast content, specifically content created for applicant’s software platform.  This renders it highly similar to the above evidence of the wording “TV” being used to describe broadcast content created for specific applications and platforms.  Applicant’s argument that the wording is not descriptive is unpersuasive.

 

Furthermore, while applicant contends that “television programs will not be shared or featured in applicant’s software,” applicant admits such content may be uploaded and broadcasted by users of applicant’s software.  Most pertinently, applicant admits its software “creates and connects a community of users, allowing them to express themselves, and to interact with each other, through the use of filters, stickers, masks, and live broadcast of themselves.” (Emphasis added).

 

In regards to applicant’s argument that as the mark “TIVI” was registered in an unrelated application, applicant is advised that prior decisions and actions of other trademark examining attorneys in registering other marks have little evidentiary value and are not binding upon the USPTO or the Trademark Trial and Appeal Board.  TMEP §1207.01(d)(vi); see In re Midwest Gaming & Entm’t LLC, 106 USPQ2d 1163, 1165 n.3 (TTAB 2013) (citing In re Nett Designs, Inc., 236 F.3d 1339, 1342, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001)).  Each case is decided on its own facts, and each mark stands on its own merits.  See AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d 1403, 1406, 177 USPQ 268, 269 (C.C.P.A. 1973); In re Binion, 93 USPQ2d 1531, 1536 (TTAB 2009).

 

Applicant’s amendment to the Identification of Goods, namely, the deletion of the word “playing,” does not alter the identification sufficiently to alleviate the merely descriptive nature of the wording “TIVI” in the context of applicant’s goods.  It is still apparent from the identification that applicant’s software allows for the broadcast of video content, and hence, allows the broadcast of content that is generally described as “TV.”

 

CONCLUSION

 

Therefore, for the reasons stated and explained above, the Section 2(e)(1) Refusal is continued and made FINAL.

 

RESPONSE GUIDLINES

 

Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond by providing one or both of the following:

 

(1)        a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements and/or resolves all outstanding refusals; and/or

 

(2)        an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 per class.

 

37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.

 

In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues.  TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  There is a fee required for filing a petition.  37 C.F.R. §2.6(a)(15).

 

 

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.  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.  

 

 

 

/Teague Avent/

Teague Avent

Trademark Examining Attorney

Law Office 125

(571) 272-1219

teague.avent@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 8/8/2017 FOR U.S. APPLICATION SERIAL NO. 86828401

 

Your trademark application has been reviewed.  The trademark examining attorney assigned by the USPTO to your application has written an official letter to which you must respond.  Please follow these steps:

 

(1)  Read the LETTER by clicking on this link or going to http://tsdr.gov.uspto.report/, entering your U.S. application serial number, and clicking 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)  Respond within 6 months (or sooner if specified in the Office action), calculated from 8/8/2017, using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  A response transmitted through TEAS must be received before midnight Eastern Time of the last day of the response period.

 

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. 

 

(3)  Questions about the contents of the Office action itself should be directed to the trademark examining attorney who reviewed your application, identified below. 

 

/Teague Avent/

Teague Avent

Trademark Examining Attorney

Law Office 125

(571) 272-1219

teague.avent@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.