To: | TBC - The Boring Company (trademarks@cooley.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88027094 - THE BORING COMPANY - 334627-20000 |
Sent: | 10/26/2018 3:33:56 PM |
Sent As: | ECOM117@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88027094
MARK: THE BORING COMPANY
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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: TBC - The Boring Company
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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: 10/26/2018
SEARCH OF OFFICE’S DATABASE OF MARKS
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).
· Section 2(e)(1) Refusal – Merely Descriptive
SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
Here, applicant has applied for “THE BORING COMPANY” for “Construction and construction management of tunnels and underground structures; consulting in the field of construction and construction management of tunnels and underground structures; providing information about construction of tunnels and underground structures” in International Class 37.
Encyclopedia Britannica discusses “BORING” as a process related to making holes with large-radius revolving tools that move at a low speed but with high torque. [See attached encyclopedia evidence]. In addition, several construction-related websites explain the term “BORING” and discuss the methods by which the “BORING” process works. Builder-Questions.com defines “BORING” as “the drilling of borings into the earth on a construction site” as a “common method of establishing the ground characteristics of the material at the project” by extracting cylinders of material. [See attached evidence]. TrenchlessPedia.com defines “BORING” related to trenchless technology as “the creation of a horizontal hole underground without disturbing the surface using directional drills and horizontal augers” to displace and move the earth. [See attached evidence].
Applicant’s website also discusses the process by which they plan to increase the speed of the “Tunnel Boring Machines” used to dig in soft-soil. [See attached evidence]. Therefore, “BORING” is descriptive of the process by which the applicant intends to go about its construction services.
The term “COMPANY” must be disclaimed as descriptive or generic of the services. “COMPANY” is defined by Merriam-Webster dictionary as “an association of persons for carrying on a commercial or industrial enterprise.” [See attached dictionary evidence]. The Wikipedia entry for applicant’s business describes “THE BORING COMPANY” as an infrastructure and tunnel construction “COMPANY” founded by Elon Musk in 2016.” [See attached evidence]. Therefore, the wording “COMPANY” merely describes a characteristic of the applied-for services.
Accordingly, “COMPANY” has no source-indicating value to the mark as applied-for and is therefore nondistinctive.
Therefore, since applicant’s services involve construction of tunnels and underground structures, likely using “BORING” methods, and applicant’s business is a “COMPANY”, the applied-for mark “THE BORING COMPANY” is merely descriptive of the applied-for services.
An applicant may check the status of or view documents filed in his or her trademark and/or service mark application or registration 24 hours a day, 7 days a week using the Trademark Status and Document Retrieval (TSDR) database on the USPTO website at http://tsdr.gov.uspto.report/. To obtain this status or view these documents, enter the application serial number or registration number and click on “Status” or “Documents.”
To expedite prosecution of the application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/trademarks/teas/index.jsp. If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/trademarks/teas/e_filing_tips.jsp and e-mail technical questions to TEAS@uspto.gov.
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.
/Alexandra Foster/
Trademark Examining Attorney
Law Office 117
Phone: (571) 272-5111
alexandra.foster1@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.