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: 5/28/2019

 

INTRODUCTION

 

This Office action is supplemental to and supersedes the previous Office action issued on November 5, 2018 in connection with this application.  Based on information and/or documentation in applicant’s response, the trademark examining attorney now issues the following new refusal: Entire Amendment Exceeds Scope of Goods in Original Application.  See TMEP §§706, 711.02. 

 

In a previous Office action dated November 5, 2018, the trademark examining attorney refused registration of the applied-for mark based on the following:  Trademark Act Section 2(e)(1) for mere descriptiveness.  In addition, applicant was required to satisfy the following requirement:  clarify the mark description and color claim. Furthermore, applicant was advised of a prior-filed application which, if registered, may cause applicant's mark to be refused registration due to likelihood of confusion pursuant to Trademark Act Section 2(d).

 

Based on applicant’s response, the trademark examining attorney notes that the prior-filed application advisory is obviated, as the prior-filed application has abandoned.  See TMEP §713.02. 

 

The following is a SUMMARY OF ISSUES that applicant must address:

 

            •  NEW ISSUE:  Entire Amendment Exceeds Scope of Goods in Original Application

            •  Section 2(e)(1) Refusal – Merely Descriptive

            •  Advisory – Possibly Generic – Supplemental Register/Section 2(f) Cannot Be Suggested

            •  Mark Description Amendment Required

 

Applicant must respond to all issues raised in this Office action and the previous November 5, 2018 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).

 

ENTIRE AMENDMENT EXCEEDS SCOPE OF GOODS IN ORIGINAL APPLICATION

 

The proposed amendment to the identification is not acceptable because it exceeds the scope of the identification in the application.  See 37 C.F.R. §§2.32(a)(6), 2.71(a); TMEP §§805, 1402.06 et seq., 1402.07.  Applicant’s goods may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the original identification in the application, and any previously accepted amendments, remain operative for purposes of future amendment.  See 37 C.F.R. §2.71(a); TMEP §1402.07(d).

 

In this case, the application originally identified the goods as follows: “Electronic carnet documents for exporters downloadable via the global communications network, namely, an international customs document that facilitates duty-free and tax-free temporary importation into foreign countries, and the re-exportation from those foreign back into the origin country.”

 

However, the proposed amendment identifies the following goods: “An internationally accepted customs document that facilitates duty-free and tax-free temporary importation into foreign countries, and the re-exportation from those foreign countries back into the origin country downloadable via the global communications network, namely, secure ATA Carnet documents for exporters.” 

 

This proposed amendment is beyond the scope of the original identification because it deletes the narrow prefatory language "electronic," thus broadening the scope of the identification. 

 

Applicant may adopt the following identification, if accurate:

 

Class 9:           An internationally accepted customs document that facilitates duty-free and tax-free temporary importation into foreign countries, and the re-exportation from those foreign countries back into the origin country downloadable via the global communications network, namely, secure electronic ATA Carnet documents for exporters

 

Applicant may amend the identification to clarify or limit the goods, but not to broaden or expand the goods beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods may not later be reinserted.  See TMEP §1402.07(e).

 

For assistance with identifying and classifying goods in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

Applicant should note the following additional ground for refusal.

 

SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE

 

Registration is refused because the applied-for mark merely describes a characteristic of applicant’s goods.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

 

Applicant's mark is "EATA" & Design for "An internationally accepted customs document that facilitates duty-free and tax-free temporary importation into foreign countries, and the re-exportation from those foreign countries back into the origin country downloadable via the global communications network, namely, secure ATA Carnet documents for exporters" in Class 9.

 

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods.  TMEP §1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)). 

 

According to the evidence attached to the November 5, 2018 office action and hereby incorporated by reference, the letter “e” used as a prefix has become commonly recognized as a designation for goods that are electronic in nature or are sold or provided electronically.  Specifically, the evidence consists of a definition from The American Heritage Dictionary, which shows that "e-" means "electronic."

 

When a mark consists of the “e” prefix coupled with a descriptive word or term for electronic goods, then the entire mark may be considered merely descriptive under Trademark Act Section 2(e)(1).  See In re SPX Corp., 63 USPQ2d 1592 (TTAB 2002) (holding E-AUTODIAGNOSTICS merely descriptive of an electronic engine analysis system comprised of a hand-held computer and related computer software); In re Styleclick.com Inc., 57 USPQ2d 1445 (TTAB 2000) (holding E FASHION merely descriptive of software for consumer use in shopping via a global computer network and of electronic retailing services); TMEP §1209.03(d).

 

Here, the evidence from www.atacarnet.com, www.iccwbo.org, and www.uscib.org, attached to the November 5, 2018 office action and hereby incorporated by reference, demonstrates that "ATA" is commonly used in applicant's industry to refer to an "ATA Carnet," which is "an international customs and temporary export-import document."

                                                                                                                                             

Applicant's goods are electronic downloadable carnet documents. See application. Therefore, "EATA" is merely descriptive of a characteristic of the applied-for goods.

 

Moreover, the circle in the applied-for mark does not obviate the mere descriptiveness of the mark. 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 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).

 

Applicant argues that the basic circle design and color of the mark, together with the "e-" prefix, "signifies 'ecologically friendly," and thus that the circle and design render the applied-for mark not merely descriptive. See May 6, 2019 office action response, pg. 1. However, applicant has not provided any evidence supporting the argued "ecologically friendly" connotation of the mark. Moreover, even had applicant provided evidence, as noted above, the letter "e" as a prefix has become commonly recognized as a designation for electronic goods. Applicant's applied-for identification of goods demonstrates that the applied-for goods are electronic in nature. See application. Additionally, as noted above, the common background shape, as well as any color, does not obviate the descriptiveness of the applied-for mark. Therefore, this argument is not persuasive.

 

Similarly, applicant argues that the font and color in the applied-for mark "makes the mark distinctive, not merely descriptive, to the branding of applicant's ATA Carnet issuing service," as it is the same font and color as in applicant's other company logos. See May 6, 2019 office action response, pg. 1. However, whether an applied-for mark is "distinctive" to its own branding has no relevance to whether it is merely descriptive in relation to the applied-for goods. A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods.  TMEP §1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)). As demonstrated above, this is the case here. Therefore, this argument is not persuasive.

 

Additionally, applicant argues that the applied-for goods are unique, and therefore that the applied-for mark is not merely descriptive. See May 6, 2019 office action response, pgs. 1-2. However, the argued uniqueness of applied-for goods has no bearing on a determination of mere descriptiveness. The evidence demonstrates that, in relation to the applied-for goods, the applied-for mark is merely descriptive. Therefore, this argument is not persuasive.

 

Similarly, applicant argues that "ATA" is not commonly used and, combined with "e-" within the circle, "is a very original mark and not a commonplace term." See May 6 2019 office action response, pg. 1. However, first, the previously attached evidence demonstrates that "ATA" is a term commonly used in applicant's industry. Indeed, applicant itself notes that "the abbreviation 'ATA' is commonly used in applicant's industry to denote an ATA Carnet, which is defined as 'an international customs and temporary import-export document,'" and that "an entity…requiring an ATA Carnet will understand from this mark that it represents an ATA Carnet, not any other 'Carnet' and is downloadable via the global communications network." See May 6, 2019 office action response, pg. 1.

 

Additionally, “whether consumers could guess what the product [or service] is from consideration of the mark alone is not the test.”  In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).  The question is not whether someone presented only with the mark could guess what the goods are, but “whether someone who knows what the goods and[/or] services are will understand the mark to convey information about them.”  DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012) (quoting In re Tower Tech, Inc.,64 USPQ2d 1314, 1316-17 (TTAB 2002)); In re Mueller Sports. Med., Inc., 126 USPQ2d 1584, 1587 (TTAB 2018). Moreover, even were the applied-for mark to be unique, the fact that an applicant may be the first or only user of a merely descriptive designation does not necessarily render a word or term incongruous or distinctive; as in this case, the evidence shows that "EATA" is merely descriptive.  See In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1514 (TTAB 2016); In re Phoseon Tech., Inc., 103 USPQ2d 1822, 1826 (TTAB 2012); TMEP §1209.03(c). Therefore, this argument is not persuasive.

 

Furthermore, applicant argues that the existence of third-party registrations that consist of or contain "e-" followed by a descriptive term demonstrates that the applied-for mark is not merely descriptive. See May 6, 2019 office action response, pgs. 1-2. However, first, some of the attached registrations are cancelled. Cancelled or expired third-party registrations have no probative value other than as evidence that the registrations were issued.  In re Datapipe, Inc., 111 USPQ2d 1330, 1336 n.11 (TTAB 2014); TBMP §704.03(b)(1)(A); see Action Temp. Servs. Inc. v. Labor Force Inc., 870 F.2d 1563, 1566, 10 USPQ2d 1307, 1309 (Fed. Cir. 1989). Furthermore, prior decisions and actions of other trademark examining attorneys in registering other marks have little evidentiary value and are not binding upon the USPTO or the Trademark Trial and Appeal Board.  TMEP §1207.01(d)(vi); see In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1793 n.10 (TTAB 2017).  Each case is decided on its own facts, and each mark stands on its own merits.  In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d at 1793 n.10 (quoting In re Boulevard Entm’t, 334 F.3d 1336, 1343, 67 USPQ2d 1475, 1480 (Fed. Cir. 2003)). Finally, the existence of these registered marks is highly unpersuasive because many of the registrations are either on the Supplemental Register or on the Principal Register under Section 2(f), both of which indicate that the marks were deemed merely descriptive. See TMEP §1212. Thus, contrary to applicant's assertion, the registrations actually demonstrate that "e-" formative marks, where the wording following "e-" is descriptive, are commonly found to be merely descriptive. Therefore, this argument is not persuasive.

 

Finally, applicant argues that applicant owns registrations that include the wording "ATA", and therefore that the applied-for mark is not merely descriptive. See May 6, 2019 office action response, pg. 2. However, merely because applicant owns registrations that include the wording "ATA" does not mean that the applied-for mark is not merely descriptive. Indeed, the attached registrations demonstrate that applicant's marks that include "ATA" are registered on the Supplemental Register and registered under Section 2(f), demonstrating the descriptiveness of the wording. See TMEP §§1212, 1213.

 

Similarly, applicant argues that "there are many registered ATA marks…which indicates that the term ATA is not generic or merely descriptive." See May 6, 2019. However, first, applicant has submitted a list of registrations. The mere submission of a list of registrations or a copy of a private company search report does not make such registrations part of the record.  See In re Peace Love World Live, LLC, 127 USPQ2d 1400, 1405 n.17 (TTAB 2018) (citing In re 1st USA Realty Prof’ls, 84 USPQ2d 1581, 1583 (TTAB 2007); In re Duofold Inc., 184 USPQ 638, 640 (TTAB 1974)); TBMP §1208.02; TMEP §710.03. To make third party registrations part of the record, an applicant must submit copies of the registrations, or the complete electronic equivalent from the USPTO’s automated systems, prior to appeal.  In re Star Belly Stitcher, Inc., 107 USPQ2d 2059, 2064 (TTAB 2013); TBMP §1208.02; TMEP §710.03.  Accordingly, these registrations will not be considered. Moreover, even had applicant properly attached the registrations, the mere registration of other "ATA" marks, in the abstract, does not demonstrate that the applied-for mark is not merely descriptive in relation to the relevant goods. Therefore, this argument is not persuasive.

 

Thus, the applied-for mark is merely descriptive, and registration is accordingly refused under Section 2(e)(1) of the Lanham Act.

 

Advisory – POSSIBLY GENERIC – SUPPLEMENTAL REGISTER/SECTION 2(f) CANNOT BE RECOMMENDED

 

In addition to being merely descriptive, the applied-for mark appears to be generic in connection with the identified goods and, therefore, incapable of functioning as a source-identifier for applicant’s goods.  In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987); In re Empire Tech. Dev. LLC, 123 USPQ2d 1544 (TTAB 2017); see TMEP §§1209.01(c) et seq., 1209.02(a).  Under these circumstances, neither an amendment to proceed under Trademark Act Section 2(f) nor an amendment to the Supplemental Register can be recommended.  See TMEP §1209.01(c).

 

Although applicant’s mark has been refused registration, applicant may respond to the refusals by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusals, applicant must also respond to the requirement set forth below.

 

MARK DESCRIPTION AMENDMENT REQUIRED

 

Applicant must submit an amended description of the mark because the current one is incomplete and does not describe all the significant aspects of the mark.  37 C.F.R. §2.37; see TMEP §§808.01, 808.02.  Descriptions must be accurate and identify all the literal and design elements in the mark.  See 37 C.F.R. §2.37; TMEP §§808 et seq. 

 

The following description is suggested, if accurate: 

 

The mark consists of the stylized wording "EATA", with the letter "E" being white inside a lime green circle, and with the wording "ATA" in blue to the right of the circle.

 

RESPONSE GUIDELINES

 

Response guidelines.  For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

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. 

 

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.  

 

 

 

/Bianca Allen/

Trademark Examining Attorney

Law Office 123

(571) 272-5667

bianca.allen@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 5/28/2019 FOR U.S. APPLICATION SERIAL NO. 88032236

 

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 5/28/2019 (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.