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: 11/15/2018

 

INTRODUCTION

 

On 10/03/2017, the trademark examining attorney issued an Office action with the following issues:

• Identification of goods and/or services requirement
• Disclaimer requirement
• Specimen requirement

 

On 3/30/2018, the applicant filed a timely response:

• Amending the identification of goods and/or services
• Amending the filing basis
• Providing a disclaimer statement

 

The application was approved for publication on 4/12/2018.  However, approval of the application was withdrawn and on 5/9/2018, the examining attorney issued a subsequent Office Action refusing the mark under Trademark Act Section 2(e)(1).

 

On 10/24/2018, the applicant filed an Amendment to Allege Use

On 10/24/2018, the applicant also filed a response:

• Arguing that the Section 2(e)(1) refusal should be withdrawn
• Amending the application to seek registration on the Supplemental Register

 

Having considered the applicant’s response, the examining attorney:

• Registration is now refused under Trademark Act Sections 23(c) and 45

 

THIS PARTIAL REFUSAL APPLIES TO CLASS 036 ONLY

 

Trademark Act Sections 23(c) and 45 Refusal

 

Registration is refused on the Supplemental Register because the applied-for mark is generic and thus incapable of distinguishing applicant’s services.  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.

 

“A mark is generic if its primary significance to the relevant public is the class or category of goods or services on or in connection with which it is used.”  TMEP §1209.01(c)(i) (citing 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); In re ActiveVideo Networks, Inc., 111 USPQ2d 1581, 1600 (TTAB 2014)).  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 at 990, 228 USPQ at 530); 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 “financial management; financial planning; financial research,” which adequately defines the genus at issue.  Attached is evidence

ADVISOR is defined as “one that advises, such as a person or firm that offers official or professional advice to clients.”  Please see the attached definition in the initial Office Action.  The specimen submitted on 6/29/2017 states that the applicant technology “is a simple, secure, powerful platform for both Advisors and Investors” and “CircleBlack Advisor acts as a hub giving your firm and advisors the tools needed…” which clearly indicates the intended user of the goods and services are those who offer professional advice to clients. 

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 services, because there are no restrictions or limitations to the channels of trade or classes of consumers.  The attached evidence from multiple websites shows that the wording “ADVISOR” in the applied-for mark means a person or firm that offers official or professional advice to clients and thus the relevant public would understand this designation to refer primarily to that genus of services because the applicant is providing various types of financial advisory services.

 

Background designs in composite marks consisting of common geometric shapes, such as circles, ovals, squares, triangles, diamonds, and other geometric designs, are generally not regarded as marks for goods and/or services absent a showing of distinctiveness in the design alone.  In re Anton/Bauer Inc., 7 USPQ2d 1380, 1381 (TTAB 1988) (citing In re Raytheon Co., 202 USPQ 317 (TTAB 1979)); TMEP §1202.11; see also Seabrook Foods, Inc. v. Bar-Well Foods Ltd., 568 F.2d 1342, 1344, 196 USPQ 289, 291 (C.C.P.A. 1977).  .  The stylization of this mark is not distinctive and the design is a simple carrier circle.  Adding stylization to descriptive or generic wording does not render the resulting mark registrable on the Principal Register unless the stylization creates a commercial impression separate and apart from the impression made by the wording itself, or the applicant can otherwise show by evidence that the particular stylized display has acquired distinctiveness. See TMEP 1209.03(w)

 

The test is whether the relevant public would understand the mark to be generic for the category or genus of the goods and/or services at issue; not whether the relevant public would use the term to describe the genus.  In re Cordua Rests., Inc., 823 F.3d 594, 603, 118 USPQ2d 1632, 1637 (Fed. Cir. 2016) (quoting In re 1800Mattress.com IP, LLC, 586 F.3d 1359, 1364, 92 USPQ2d 1682, 1685 (Fed. Cir. 2009)); TMEP §1209.01(c)(i).  In such a determination, the “relevant public” represents 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 638, 640, 19 USPQ2d 1551, 1553 (Fed. Cir. 1991)); see In re Cordua Rests., Inc., 823 F.3d at 603-04, 118 USPQ2d at 1637-38.

 

Evidence of the public’s understanding of a designation may be obtained from any competent source, such as dictionaries, trade journals, magazines, catalogs, newspapers, and other publications.  See In re Cordua Rests., Inc., 823 F.3d 594, 599, 118 USPQ2d 1632, 1634 (Fed. Cir. 2016) (quoting Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960, 965, 114 USPQ2d 1827, 1830 (Fed. Cir. 2015)); TMEP §1209.01(c)(i).  This includes evidence obtained from electronic sources such as the LEXIS/NEXIS® research database and Internet websites.  See In re Meridian Rack & Pinion, 114 USPQ2d 1462, 1465-66 (TTAB 2015); In re Active Ankle Sys., Inc., 83 USPQ2d 1532, 1534-37 (TTAB 2007); TBMP §1208.03; TMEP §§710.01(b), 1209.01(c)(i). 

 

As evidenced by the applicant’s specimen of record, the application is identified as “CircleBlack for Advisors” which indicates the person using the services as well as “Learn more about our Advisor Solutions” which indicates the genus of the services are related to advisors.  Further, the specimen states “As an advisor, you use lots of tools…CircleBlack takes everything you use in your practice and creates a single sign-on hub.”  An applicant’s own website or marketing material is also probative and can be “the most damaging evidence” in showing how the relevant public perceives a term.  In re Mecca Grade Growers, LLC, 125 USPQ2d 1950, 1957 (TTAB 2018) (citing Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d at 966, 114 USPQ2d at 1831; In re Gould Paper Corp., 834 F.2d 1017, 1019, 5 USPQ2d 1110, 1112 (Fed. Cir. 1987)).

 

An applicant’s website may assist in clarifying or refining the genus by providing the context for the terms in the identification.  In re Reed Elsevier Props. Inc., 482 F.3d 1376, 1379, 82 USPQ2d 1378, 1380 (Fed. Cir. 2007); see In re Empire Tech. Dev. LLC, 123 USPQ2d 1544, 1547-48 (TTAB 2017).

           

The fact that the genus is often derived from the identification of the goods and/or services in the application is based on the premise that the identification accurately reflects an applicant’s actual use of the applied-for mark.  In re DNI Holdings Ltd., 77 USPQ2d 1435, 1437-38 (TTAB 2005) (citing Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 640, 19 USPQ2d 1551, 1552 (Fed. Cir. 1991)). 

 

Where an applicant’s website or other competent evidence shows that applicant’s goods and/or services are offered in connection with other interrelated goods and/or services not in the identification, those goods and/or services should also be considered when determining the particular genus.  See In re Reed Elsevier Props. Inc., 482 F.2d 1376, 1379-80, 82 USPQ2d 1378, 1380-81 (Fed. Cir. 2007); In re DNI Holdings Ltd., 77 USPQ2d at 1438.

 

Applicant cannot overcome this refusal by submitting a claim of acquired distinctiveness under Trademark Act Section 2(f).  See 15 U.S.C. §1052(f).  Such a claim would be insufficient because “generic terms cannot be rescued by proof of distinctiveness or secondary meaning no matter how voluminous the proffered evidence may be.”  Royal Crown Co. v. Coca-Cola Co., 892 F.3d 1358, 1370, 127 USPQ2d 1041, 1048 (Fed. Cir. 2018) (quoting In re Northland Aluminum Prods., 777 F.2d 1556, 1558, 227 USPQ2d 961, 962 (Fed. Cir. 1985)); see TMEP §1212.02(i).

 

Abandonment Advisory

 

If applicant does not respond to this Office action within the six-month period for response, International Class 036 will be deleted from the application.  The application will then proceed with International Classes 009 and 042 only.  See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

 

RESPONSE GUIDELINES

 

Applicant should include the following information on all correspondence with the Office:  (1) the name and law office number of the trademark examining attorney, (2) the serial number and filing date of the application, (3) the date of issuance 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).

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

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.  

 

/mvaghani/

Mayur Vaghani

Trademark Examining Attorney

Law Office 124

Phone: (571) 272-1615

mayur.vaghani@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 11/15/2018 FOR U.S. APPLICATION SERIAL NO. 87510531

 

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 11/15/2018 (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.