UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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U.S. APPLICATION SERIAL NO. 87435171
MARK: SUPERCARS
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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: ANKI, INC.
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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: 8/2/2017
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.
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).
SUMMARY OF ISSUES:
SECTION 2(E)(1) REFUSAL - MERELY DESCRIPTIVE
Registration is refused because the applied-for mark merely describes a feature or characteristic of applicant’s goods and/or services. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.
“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).
Applicant’s standard character mark is “SUPERCARS” for remote control vehicles, namely, cars for use as part of interactive entertainment systems and toys.
SUPER is defined as of a high grade or quality. Car is defined as a vehicle on moving on wheels. See attached definitions from Merriam-Webster. In relation to applicant’s goods which are remote control vehicle cars, the term “CARS” in the mark describes the exact characteristic of feature of the vehicle type.
The Trademark Trial and Appeal Board has determined that “if the word ‘super’ is combined with a word [that] names the goods or services, or a principal component, grade or size thereof, then the composite term is considered merely descriptive of the goods or services.” In re Phillips-Van Heusen Corp., 63 USPQ2d 1047, 1052 (TTAB 2002) (holding SUPER SILK merely laudatory and descriptive of applicant’s shirts being of an excellent, first-rate, or superior grade of silk fabric), quoted in In re Positec Grp. Ltd., 108 USPQ2d 1161, 1172 (TTAB 2013) (holding SUPERJAWS merely descriptive of applicant’s various machine tools, hand tools, and heavy-duty workbench accessories as superior vice systems for grasping and holding work pieces); see In re Carter-Wallace, Inc., 222 USPQ 729, 730 (TTAB 1984) (holding SUPER GEL merely laudatory and descriptive of applicant’s shaving gel being of superior quality).
Thus, applicant’s use of the term “SUPER” in connection with the term “CARS” (which identifies the exact nature of the type of vehicle toys in the applied-for mark) describes the characteristic or feature of the goods as high grade or quality cars. The use of the term “SUPER” in the mark is thus combined with a word that names the goods such that the composite term is descriptive of the goods.
Moreover, the word supercar is defined as the following:
Thus, in connection with applicant’s remote control cars, the wording in the mark is the plural form of the term supercar which describes the characteristic or feature of applicant’s goods as this type of car. This is supported by the specimen of record which is a box for the goods containing a picture of two supercars called GROUNDSHOCK and SKULL which appear to be toy sports cars or supercars. Thus, applicant’s mark appears to describe the exact nature of the type of toy version of the genre of cars.
As additional evidence of use of the term supercar as identifying the exact nature of types of remote control toy cars, the examining attorney attaches the following, namely:
Applicant should note that material obtained from the Internet is generally accepted as competent evidence. See In re Leonhardt, 109 USPQ2d 2091, 2098 (TTAB 2008) (accepting Internet evidence to show descriptiveness); TBMP §1208.03; TMEP §710.01(b).
Thus, registration is refused because the applied-for mark “SUPERCARS” merely describes a characteristic or feature of the goods as cars of high grade or quality as well as the exact nature of the type of toy car, namely, a supercar.
ADVISORY: APPLIED-FOR MARK IS POSSIBLY GENERIC
REQUIREMENT(S)
IDENTIFICATION OF GOODS
The wording “AND TOYS” in the identification of goods is indefinite and must be clarified because the exact nature of the toys must be set forth by common commercial name for proper identification and classification of the goods in this class. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend this wording to specify the common commercial or generic name of the goods. See TMEP §1402.01. If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses. See id.
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
Applicant may substitute the following wording, if accurate:
Remote control vehicles, namely, cars for use as part of interactive entertainment systems; toys, namely, toy vehicles and accessories therefor, International Class 28.
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.
/Brendan McCauley/
Brendan McCauley
Trademark Examining Attorney
Law Office 114
571-272-9459
Brendan.McCauley@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.
