To: | Lena Mae Johnson (rhomburg@cox.net) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87388187 - SOFTHOOKS - Johnson.Lena |
Sent: | 7/18/2017 7:44:34 AM |
Sent As: | ECOM102@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87388187
MARK: SOFTHOOKS
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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: Lena Mae Johnson
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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. 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: 7/18/2017
THIS IS A FINAL OFFICE ACTION
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.
This final Office action is a response to applicant’s communication filed July 10, 2017.
STATUS
In a first Office action dated June 28, 2017, the examining attorney refused registration of applicant’s mark under Trademark Act Section 2(e)(1) because the mark is merely descriptive of applicant’s goods. In its response, applicant 1) Set forth reasons as to why the refusal should be withdrawn; and 2) Disclaimed SOFT and HOOK. Neither is acceptable.
DESCRIPTIVENESS REFUSAL IS MADE FINAL
In this case, applicant has applied to register the mark SOFTHOOKS for goods identified as “hangers for Christmas tree ornaments; ornament hooks for Christmas trees.” The definition of SOFT is, “Yielding readily to pressure or weight.” The definition of HOOK is, “A curved or sharply bent device, usually of metal, used to catch, drag, suspend, or fasten something else.” Please see the definitions from the online American Heritage® Dictionary of the English Language, Fifth Edition attached to the first Office action. Used together, applicant’s mark immediately describes the fact that applicant’s goods are in the nature of hooks that yield readily to pressure.
In its response, applicant argues that “the product is not in the nature of ‘hooks that yield to pressure’ and thus not ‘soft’ in the sense that they are weak.”
It is not the contention of the examining attorney that the hooks are soft in the sense that they are weak. Rather, they are soft in the sense that they are not hard. According to evidence made of record by applicant in the nature of applicant’s provisional patent application, the hooks are soft in two ways. First, they are soft when in use because, unlike traditional wire hooks, they are “flexible” and “non-penetrating to flesh” (page 2). In the provisional patent application, applicant explains that “additional strength may be required in the upper or lower hook” and for that reason the hooks may require varying degrees of “stiffening” and “softening” enhancements (page 4). Second, the hooks are soft after they have been used because, as applicant states in its response, “being made of paper, will become soft when they are moistened, which occurs if ingested” or when recycled.
Applicant itself, therefore, uses the word “softening” or “soft” to describe the hooks both during the time of their use and after their use, when they have been made wet. In addition, applicant has disclaimed the wording SOFT and HOOK which, although unacceptable because an entire mark cannot be disclaimed (please see advisory note, below), would appear to be a concession on applicant’s part that the hooks are, in fact, soft. If the goods are hooks, and the hooks are soft, then the mark SOFTHOOKS is merely descriptive unless it is demonstrated that the combination of the descriptive terms SOFT and HOOKS into SOFTHOOKS creates a unitary, non-descriptive mark, such as a double entendre or an incongruity. That is not the case here.
For the foregoing reasons, the refusal is maintained and made FINAL.
SUPPLEMENTAL REGISTER
ADVISORY NOTE—ENTIRE MARK MAY NOT BE DISCLAIMED
PROPER RESPONSE TO A FINAL OFFICE ACTION
(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).
QUESTIONS
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 refusals or requirements 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.
/John M. Gartner/
Trademark Examining Attorney
Law Office 102
(571) 272-9255
john.gartner@uspto.gov (informal correspondence)
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.
ATTORNEYS PERMITTED TO PRACTICE BEFORE THE USPTO: When responding to this Office action, please note that the only attorneys who may sign responses and otherwise practice before the USPTO in trademark matters are as follows:
(1) Attorneys in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other U.S. commonwealths or U.S. territories; and
(2) Canadian agents/attorneys who represent applicants located in Canada and (a) are registered with the USPTO and in good standing as patent agents or (b) have been granted reciprocal recognition by the USPTO.
See 37 C.F.R. §§2.17(a), (e), 2.62(b), 11.1, 11.14(a), (c); TMEP §§602, 712.01.
Foreign attorneys, other than authorized Canadian attorneys, are not permitted to represent applicants before the USPTO (e.g., file written communications, authorize an amendment to an application, or submit legal arguments in response to a requirement or refusal). See 37 C.F.R. §§2.17(e), 11.14(c), (e); TMEP §602.03-.03(c).
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.