Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NONFINAL OFFICE ACTION

 

The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned.  Respond using the Trademark Electronic Application System (TEAS).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

 

Issue date:  December 17, 2019

 

This Office action is in response to applicant’s communication dated November 25, 2019 where applicant:

 

(1)   amended the identification of goods; and

(2)   attempted to claim acquired distinctiveness under Section 2(f).

 

The examining attorney has reviewed the applicant’s response and determined the following:

 

(1)   applicant’s amendment of the identification of goods is acceptable and made of record;

(2)   in light of applicant’s amendment of the identification of goods, the Section 2(d) Likelihood of Confusion refusal is obviated;

(3)   applicant procedurally failed to claim acquired distinctiveness under Section 2(f), therefore applicant’s attempt to claim acquired distinctiveness is refused;

(4)   applicant failed to provide any of the required information, and the requirement for additional information is maintained and continued;

(5)   in light of applicant’s attempt to submit a claim of acquired distinctiveness under Section 2(f), a genericness refusal issues under Sections 1, 2 and 45; and

(6)   in the alternative, the Section 2(e)(1) mere descriptiveness refusal is maintained and continued.

SUMMARY OF ISSUES

 

(1)   Sections 1, 2 and 45 Refusal – Applied-for Mark Is Generic

(2)   Refusal in the Alternative: Section 2(e)(1) Mere Descriptiveness Refusal

(3)   Refusal of Section 2(f) Claim

(4)   Additional Information Required

 

The examining attorney incorporates by reference all arguments and evidence in the previous Office actions dated November 2, 2018 and May 24, 2019.

 

SECTIONS 1, 2 AND 45 REFUSAL – APPLIED-FOR MARK IS GENERIC

 

Registration was initially refused under Trademark Act Section 2(e)(1) because the applied-for mark is merely descriptive of applicant’s goods.  15 U.S.C. §1052(e)(1). In response, applicant attempted to amend the application to add a claim of acquired distinctiveness under Section 2(f).  15 U.S.C. §1052(f). For the reasons described in greater detail below, applicant procedurally failed to do so.

 

Registration is now refused because the applied-for mark is generic for applicant’s goods.  Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051, 1052, 1127; see TMEP §§1209.01(c) et seq., 1209.02(a)(ii).  Thus, applicant’s claim of acquired distinctiveness under Section 2(f), even if it had been properly submitted, would still have been insufficient to overcome the refusal 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, 1365, 127 USPQ2d 1041, 1045 (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).  

 

“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 at 989-90, 228 USPQ at 530; 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 as “Software program that synchronizes an audio recording of a legal proceeding with the written transcript,” which adequately defines the genus at issue.

 

Regarding the second part of the inquiry, the relevant public is the purchasing or consuming public for the identified goods.  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 goods, because there are no restrictions or limitations to the channels of trade or classes of consumers.  The examining attorney attached to the Office action dated May 24, 2019 evidence from Merriam-Webster.com which showed that the term “AUDIO” means “sound”; and “SYNC” means to “synchronize,” which in turn means “to cause (things) to agree in time or to make (things) happen at the same time and speed.” In the context of applicant’s goods, the mark immediately conveys that applicant’s software causes sound to agree in time with something else. Thus the relevant public would understand this designation to refer primarily to that genus of goods because applicant’s use of the term has not been substantially exclusive and continuous. Specifically, the examining attorney attached to the Office action dated May 24, 2019 screenshots from NYND.USCourts.gov, MartelElectronics.com, and CCRBoard.WildApricot.org, which showed that others use the wording “AUDIO SYNC” or “AUDIOSYNC” generically to refer to software that synchronizes an audio recording of a legal proceeding with the text of a transcript.

 

Because the applied-for mark identifies a generic subset of software goods, registration is therefore refused pursuant to Trademark Act Sections 1, 2, and 45. 15 U.S.C. §§1051, 1052, 1127; see TMEP §§1209.01(c) et seq., 1209.02(b).

 

REFUSAL IN THE ALTERNATIVE – APPLIED-FOR MARK IS MERELY DESCRIPTIVE

 

In the alternative, if the applied-for mark is ultimately determined not to be generic by an appellate tribunal, then the refusal of registration based on the applied-for mark being merely descriptive of applicant’s goods is maintained and continued for the reasons specified in the previous Office action.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

 

In addition, applicant’s claim of acquired distinctiveness in the response is a concession that the mark sought to be registered is merely descriptive of applicant’s goods.  In re Leatherman Tool Grp., Inc., 32 USPQ2d 1443, 1444 (TTAB 1994); see Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 1577, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988).

 

REFUSAL OF SECTION 2(f) CLAIM

 

In its Response, applicant attempted to claim acquired distinctiveness under Trademark Act Section 2(f). Applicant’s attempt was procedurally defective. Although applicant provided the following statement, “The mark has become distinctive of the goods/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 the five years immediately before the date of this statement,” applicant failed to verify this statement. Instead, applicant stated “The filing Attorney has elected not to submit the signed declaration, believing no supporting declaration is required under the Trademark Rules of Practice.” Applicant’s belief was incorrect. This statement must be verified with an affidavit or signed declaration under 37 C.F.R. §2.20. 37 C.F.R. §2.41(a)(2); TMEP §1212.05(d); see 37 C.F.R. §2.193(e)(1).

 

Even if applicant had properly asserted a claim of acquired distinctiveness under Trademark Act Section 2(f) based on applicant’s use of the mark in commerce with applicant’s goods for five years prior to the date on which the claim was made, such claim would have failed. See 15 U.S.C. §1052(f). As the previously attached evidence demonstrates, and as explained above, the allegation of five years’ use would have been insufficient to show acquired distinctiveness because the applied-for mark is generic for applicant’s goods, and a genericness refusal cannot be overcome via a Section 2(f) claim; in the alternative, even a properly submitted Section 2(f) claim would have been insufficient to show acquired distinctiveness because the applied-for mark is highly descriptive of applicant’s goods. See In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 1336-37, 116 USPQ2d 1262, 1265 (Fed. Cir. 2015); Alacatraz Media Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1765 (TTAB 2013); TMEP §1212.05(a).

 

If the applied-for mark is ultimately determined to be merely descriptive and not generic, then 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, even if properly submitted, would have been insufficient to show acquired distinctiveness of the applied-for mark because applicant has provided no evidence to demonstrate that consumersperceive the applied-for mark as primarily source-identifying. Applicant submitted no evidence in support of the Section 2(f) claim, only the unverified claim, itself.

 

ADDITIONAL INFORMATION REQUIRED

 

For the reasons stated in the Office action dated May 24, 2019, applicant was required to provide additional information specified therein. Applicant failed to respond to any of the requests for information and/or documentation.

 

Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.

 

RESPONSE GUIDELINES

 

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.  

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

 

/Dana Dickson/

Dana Dickson

Examining Attorney

Law Office 113

571.270.7552

Dana.Dickson@USPTO.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on December 17, 2019 for

U.S. Trademark Application Serial No. 88031966

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Dana Dickson/

Dana Dickson

Examining Attorney

Law Office 113

571.270.7552

Dana.Dickson@USPTO.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from December 17, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”