To: | Khan, Arshad A (brad@rothschildesq.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87584053 - UMMAA BROADCASTING - N/A |
Sent: | 6/6/2018 12:20:00 PM |
Sent As: | ECOM112@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. 87584053
MARK: UMMAA BROADCASTING
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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: Khan, Arshad A
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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: 6/6/2018
This Office action is supplemental to and supersedes the previous Office action issued on December 1, 2017 in connection with this application. Based on information and/or documentation in applicant’s response, the trademark examining attorney raises the following new issue: Section 2(f) claim insufficient. See TMEP §§706, 711.02.
In a previous Office action(s) dated December 1, 2017, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(e)(1) as merely descriptive of the applied-for services, failure to show the applied-for mark in use in commerce with any of the specified services. In addition, applicant was required to satisfy the following requirement(s): amend the identification of services, disclaim descriptive wording in the mark and provide information about the services.
In its response, applicant responded to the Section 2(e)(1) refusal by asserting a claim of acquired distinctiveness. Applicant also submitted a specimen, disclaimed descriptive wording, amended the identification of services and provided information about the services.
Based on applicant’s response, the trademark examining attorney notes that the following requirement(s) have been satisfied: disclaimer provided, definite identification of services provided, information about services provided. See TMEP §§713.02, 714.04.
The following refusal(s) and/or requirement(s) are continued and maintained: Specimen Required; Section 2(e)(1) Refusal.
The following is a SUMMARY OF ISSUES that applicant must address:
• Section 2(f) Claim Insufficient
• Section 2(e)(1) Refusal – Mark Is Merely Descriptive
• Specimen Required
Applicant must respond to all issues raised in this Office action and the previous December 1, 2017 Office action, within six (6) months of the date of issuance of this Office action. 37 C.F.R. §2.62(a); see TMEP §711.02. If applicant does not respond within this time limit, the application will be abandoned. 37 C.F.R. §2.65(a).
SECTION 2(f) ACQUIRED DISTINCTIVENESS
An applicant bears the burden of proving that a mark has acquired distinctiveness under Trademark Act Section 2(f). In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 1335, 116 USPQ2d 1262, 1264 (Fed. Cir. 2015) (citing In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1422 (Fed. Cir. 2005)); TMEP §1212.01. “To show that a mark has acquired distinctiveness, an applicant must demonstrate that the relevant public understands the primary significance of the mark as identifying the source of a product or service rather than the product or service itself.” In re Steelbuilding.com, 415 F.3d at 1297, 75 USPQ2d at 1422.
In the present case, applicant’s claim of acquired distinctiveness based on five years’ use in commerce is insufficient to show acquired distinctiveness of the applied-for mark because UMMAA, a version of the widely used term UMMAH, is highly descriptive of the applicant’s consumer group, the worldwide Muslim community, while BROADCASTING identifies the means of distributing applicant’s programming. See evidence discussed in the following section.
To support the claim of acquired distinctiveness, applicant may respond by submitting other evidence. See TMEP §1212.02(g). Such evidence may include “advertising expenditures, sales success, length and exclusivity of use, unsolicited media coverage, and consumer studies (linking the name to a source).” In re Change Wind Corp., 123 USPQ2d 1453, 1467 (TTAB 2017) (quoting In re Steelbuilding.com, 415 F.3d 1293, 1300, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005)). A showing of acquired distinctiveness need not consider all of these types of evidence; no single factor is determinative. In re Steelbuilding.com, 415 F.3d at 1300, 75 USPQ2d at 1424; see TMEP §§1212.06 et seq. Rather, the determination involves assessing all of the circumstances involving the use of the mark. See In re Steelbuilding.com, 415 F.3d at 1300, 75 USPQ2d at 1424 (citing Thompson Med. Co., Inc. v. Pfizer Inc., 753 F.2d 208, 217, 225 USPQ2d 124, 131-32 (Fed. Cir. 1985)).
If applicant cannot submit additional evidence to support the claim of acquired distinctiveness, applicant may respond to the refusal by arguing in support of registration and/or amending the application to seek registration on the Supplemental Register. See 15 U.S.C. §1091(a); 37 C.F.R. §§2.47, 2.75(a); TMEP §§801.02(b), 816. If applicant amends the application to the Supplemental Register, applicant is not precluded from submitting evidence and arguments against this refusal. TMEP §816.04.
SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
In this case, applicant’s mark combines two descriptive words to create a merely descriptive mark.
Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the goods and/or services is the combined mark registrable. See In re Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968); In re Positec Grp. Ltd., 108 USPQ2d 1161, 1162-63 (TTAB 2013).
The attached evidence shows that the individual terms have descriptive meanings in relation to the goods and/or services, and that the combined terms retain the descriptive meaning:
1. UMMAA or UMMAH – defined as the “Islamic community” or the “Muslim world” (website materials attached to first action), and used here to describe applicant’s consumer group:
a. http://books.google.com/books?id=oRG9BAAAQBAJ&pg=PT162&lpg=PT162&dq=media+for+the+umma&source=bl&ots=iMID4-rSS3&sig=FaBU4yZpU9vJp03JahRyAvVvbIY&hl=en&sa=X&ved=0ahUKEwjBztWAlbPbAhUDnFkKHWIWDUcQ6AEITTAG#v=onepage&q=media%20for%20the%20umma&f=false – “Muslim media has immensely development my sense of belonging to an ‘umma’”
b. http://www.campaignlive.com/article/why-brands-cant-afford-ignore-us-muslim-consumer/1347429 (attached previously)
c. http://iiumummah.blogspot.com/2012/05/we-consumers.html (attached previously)
d. http://www.sciencedirect.com/science/article/pii/S1877042811008548 (attached previously)
2. BROADCASTING: defined as the act of transmitting speech, music, visualimages, etc., as by radio or television (http://www.dictionary.com/browse/broadcasting?s=t) and used to describe the means by which applicant’s services are delivered, distributed over television, satellite, film, audio, video, internet, and 3-D virtual reality media.
a. http://www.psacentral.org/campaign/Project_roadblock?irid=HomeButton|PRB – public service programs broadcast on television; (attached previously)
b. http://mediatracks.com/services/public-service-announcements-psas/ - public service announcements are broadcast to the public (attached previously)
c. http://ccmc.org/tips/public-service-announcements/ - public service programs distributed via broadcasting. (attached previously)
Therefore, consumers will immediately understand that applicant’s programming is directed towards the Muslim community and be distributed via broadcasting. Thus, applicant’s mark UMMAA BROADCASTING is merely descriptive of the intended consumers and means of distribution of the services, and is refused registration under Section 2(e)(1) of the Trademark Act.
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
SUPPLEMENTAL REGISTER ADVISORY
An amendment to the Supplemental Register does not resolve the requirement for a substitute specimen. If applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.
Registration is refused because the specimen does not show the applied-for mark in use in commerce in International Class(es) 41. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a), 1301.04(g)(i). Specifically, applicant submitted a specimen consisting of a business card with applicant’s contact information in the form of phone numbers, fax numbers, physical address, email addresses, a website, and applicant’s mark UMMAA BROADCASTING. There is no wording on the business card to create an association with the services, which are identified as “continuing public service programs in the field of political and social issues relevant to Muslims produced and distributed over television, satellite, film, audio, video, internet, and 3-D virtual reality media.”
“Broadcasting” is defined as “to transmit or make public by means of radio or television.” http://www.merriam-webster.com/dictionary/broadcasting. As such, any association between the mark and services would be an association between the mark and transmission services rather than the creation of media content, the services identified in applicant’s recitation of services. Without any language referencing content creation, the requisite association is not present in the specimen. Therefore, the specimen does not show use of the applied-for mark for the applied-for services.
In addition, the specimen appears to be a mockup of a business card, rather than a business card distributed in commerce, as the website redirects to a parked page rather than a website with applicant’s content. http://www.ummaabroadcasting.org/.
An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of services identified in the application or amendment to allege use. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and webpages that show the mark used in the actual sale, rendering, or advertising of the services. See TMEP §1301.04(a), (h)(iv)(C). Specimens comprising advertising and promotional materials must show a direct association between the mark and the services. TMEP §1301.04(f)(ii).
Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(1) Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the services identified in the application or amendment to allege use. A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.” The substitute specimen cannot be accepted without this statement.
(2) Amend the filing basis to intent to use under Section 1(b), for which no specimen is required. This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.
For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.
The USPTO proposes to change federal trademark rules to require applicants and registrants to (1) file submissions concerning applications and registrations online using the USPTO’s Trademark Electronic Application System (TEAS) and (2) provide and maintain an accurate email address for receiving correspondence from the USPTO. See the Mandatory Electronic Filing Rules webpage for more information.
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.
/Erica Jeung Dickey/
Examining Attorney
Law Office 112
571-270-3517
erica.dickey@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.