United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88065268
Mark: FLYER
|
|
Correspondence Address: WILSON SONSINI GOODRICH & ROSATI
|
|
Applicant: Kitty Hawk Corporation
|
|
Reference/Docket No. 49162-TM1011
Correspondence Email Address: |
|
FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA). A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action.
Issue date: December 27, 2019
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 request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).
This Office action is in response to applicant’s communication filed on November 11, 2019.
Refusal of Registration under Trademark Act Section 2(e)(1) Made FINAL
Applicant has admitted the descriptive nature of the word “FLYER” for aircraft per applicant’s disclaimer of “FLYER” in Registration No. 5874729, and applicant’s amendment of Application Serial Nos. 88976295 and 8896350 to the Supplemental Register.
The instant application covers the following services in International Classes 39 and 41.
Class 39: Air transportation services.
Class 41: Providing recreational aviation flights in aircraft.
Applicant provides recreational aviation flights and air transportation services via aircraft. The aircraft are commonly known and referred to as “flyers”, a variant of “flier”. The people who fly the aircraft and/or are passengers in the aircraft are commonly known and referred to as flyers or fliers. See the evidence and definitions of “flyer” attached to the October 19, 2018 and May 10, 2019 Office actions, and definitions of “flyer” and selected excerpts from the Internet attached hereto referencing the descriptiveness of “flyer” in connection with the applied-for services.
Applicant asserts that the mark “FLYER” is suggestive, not merely descriptive of the applied-for services on the basis that “(i) a consumer must engage in mature thought or follow a multi-stage reasoning process to actually determine the significant attributes of Applicant’s goods and services, and (ii) the primary significance of the mark is not descriptive in nature.”
As a general premise a mark is suggestive if it requires mature thought to draw a connection between the mark and the identified services. However, when this premise is applied to the instant mark, as is required under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1), there is a direct connection of the mark to the identified services based on the common use and understanding that “flyer” references pilots of aircraft used for applicant’s air transportation and aviation flight services, air transportation of passengers, and aviation flights in aircraft flown by pilots and passengers.
Applicant’s second argument is that the mark is “not descriptive in nature” as illustrated by the several other dictionary definitions of
“flyer”. The finding of descriptiveness under
Trademark Act Section2(e)(1) is determined only with respect to the relevant services as described in the application, not in the abstract. DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir.
2012). “That a term may have other meanings in different contexts is not controlling.” In re Franklin Cnty.
Historical Soc’y, 104 USPQ2d 1085, 1087 (TTAB 2012) (citing In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979)); TMEP §1209.03(e). “It
is well settled that so long as any one of the meanings of a term is descriptive, the term may be considered to be merely descriptive.” In re Mueller Sports Med., Inc., 126 USPQ2d 1584, 1590 (TTAB 2018) (quoting In re
Chopper Indus., 222 USPQ 258, 259 (TTAB 1984)).
The dictionary definitions and selected internet references of record and attached hereto confirm that the mark “FLYER” is inherently descriptive of applicant’s services. “FLYER” is a commonly used term to describe air transportation services by passengers and pilots, and aviation flights in aircraft by passengers and pilots. Average purchasers will require no mature thought or imagination to make the direct connection between the mark and the services of record with a high “degree of particularity”. No “multi-stage reasoning process” is needed to determine on viewing the mark the significant attributes of applicant’s services.
Proper Response to Final Office Action
Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a). Applicant may respond by providing one or both of the following:
(1) A response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements and/or resolves all outstanding refusals; and/or
(2) An appeal to the Trademark Trial and Appeal Board filed using the Trademark Electronic Application System (TEAS) with the required filing fee of $200 per class.
37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.
In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues. TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). There is a fee required for filing a petition. 37 C.F.R. §2.6(A)(15).
/Barbara A. Gold, Esq./
United States Patent and Trademark Office
Law Office 106
(571) 272-9165
Barbara.gold@uspto.gov
RESPONSE GUIDANCE