To: | TBC - The Boring Company (trademarks@cooley.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88027098 - THE BORING COMPANY - 334627-20000 |
Sent: | 10/26/2018 3:34:59 PM |
Sent As: | ECOM117@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88027098
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
o Supplemental Register & Section 2(f) Suggested
· Disclaimer Required
SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
Here, applicant has applied for “THE BORING COMPANY” for “Transportation services, namely, high-speed transportation of passengers and goods via autonomous skates; providing information about high speed transportation of passengers and goods via autonomous skates; Transportation services, namely, providing a private transit-way for others” in International Class 39.
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 indicates that they intend to dig tunnels that would “enable rapid transit across densely populated regions.” [See attached evidence]. Applicant envisions a “large network of tunnels many levels deep” that would ease and facilitate transportation by reducing “congestion.” [See attached evidence]. The website provides examples of current projects, including the “Test Tunnel” in Hawthorne, California, the “Dugout Loop” in Los Angeles, California, and “The Chicago Express Loop” in Chicago, Illinois. [See attached evidence].
Applicant plans to build this applied-for transportation system by digging holes in the earth and constructing the tunnels underground, discussed above as “BORING”, by increasing the speed of the “Tunnel Boring Machines” used in the process of digging in soft-soil. [See attached evidence]. Therefore, “BORING” is descriptive of the process by which the transportation system will be built.
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 transportation systems built through 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.
SUPPLEMENTAL REGISTER & SECTION 2(f) SUGGESTED
To seek registration on the Principal Register based on a claim of acquired distinctiveness under Section 2(f), applicant generally may (1) submit actual evidence that the mark has acquired distinctiveness of the goods and/or services, (2) claim ownership of an active prior U.S. registration for the same mark for sufficiently similar goods and/or services, or (3) provide the following verified statement of five years’ use: “The mark has become distinctive of the goods and/or services through the applicant’s substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for at least five years immediately before the date of this statement.” See 15 U.S.C. §1052(f); 37 C.F.R. §2.41(a); TMEP §§1212.03-.06 et seq.
To amend the application to the Supplemental Register, applicant must provide a written statement requesting that the application be amended to the Supplemental Register. TMEP §816.01; see 15 U.S.C. §1091; 37 C.F.R. §2.47.
DISCLAIMER REQUIRED
As discussed in the Section 2(e)(1) refusal above, the term “COMPANY” is merely descriptive of the applied-for services. [See Section 2(e)(1) Refusal, above].
An applicant may not claim exclusive rights to terms that others may need to use to describe their goods and/or services in the marketplace. See Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 1560, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991); In re Aug. Storck KG, 218 USPQ 823, 825 (TTAB 1983). A disclaimer of unregistrable matter does not affect the appearance of the mark; that is, a disclaimer does not physically remove the disclaimed matter from the mark. See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 978, 144 USPQ 433, 433 (C.C.P.A. 1965); TMEP §1213.
If applicant does not provide the required disclaimer, the USPTO may refuse to register the entire mark. See In re Stereotaxis Inc., 429 F.3d 1039, 1040-41, 77 USPQ2d 1087, 1088-89 (Fed. Cir. 2005); TMEP §1213.01(b).
Applicant should submit a disclaimer in the following standardized format:
No claim is made to the exclusive right to use “COMPANY” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this disclaimer requirement online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/disclaimer.jsp.
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.