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: 12/15/2018

 

 

Database Search: 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).

 

Application Has Been Reviewed: The referenced application has been reviewed by the assigned trademark examining attorney.  To avoid abandonment, the applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

Summary of Issues Applicant Must Address

• Refusal Based on Trademark Act Section 2(e)(1) – Descriptiveness of the Mark
• Additional Information Regarding Descriptiveness

 

Refusal Based on Trademark Act Section 2(e)(1) – Descriptiveness of the Mark

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

 

Descriptiveness is considered in relation to the relevant goods and services.  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)).

 

Generally, if the individual components of a mark retain their descriptive meaning in relation to the goods and services, the combination results in a composite mark that is itself descriptive and not registrable.  In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1516 (TTAB 2016) (citing In re Tower Tech, Inc., 64 USPQ2d 1314, 1317-18 (TTAB (2002)); TMEP §1209.03(d); see, e.g., Apollo Med. Extrusion Techs., Inc. v. Med. Extrusion Techs., Inc., 123 USPQ2d 1844, 1851 (TTAB 2017) (holding MEDICAL EXTRUSION TECHNOLOGIES merely descriptive of medical extrusion goods produced by employing medical extrusion technologies); In re Cannon Safe, Inc., 116 USPQ2d 1348, 1351 (TTAB 2015) (holding SMART SERIES merely descriptive of metal gun safes); In re King Koil Licensing Co., 79 USPQ2d 1048, 1052 (TTAB 2006) (holding THE BREATHABLE MATTRESS merely descriptive of beds, mattresses, box springs, and pillows). 

 

Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the goods or services is the combined mark registrable.  See In re Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968); In re Positec Grp. Ltd., 108 USPQ2d 1161, 1162-63 (TTAB 2013).

 

In this case, both the individual components and the composite result are descriptive of a feature of the applicant’s services and do not create a unique, incongruous, or nondescriptive meaning in relation to the services.  The attached evidence demonstrates that the wording in the mark describes a feature of the services:

 

• The attached dictionary entry from LOKAD Quantitative Supply Chain shows that “phantom inventory” refers to “goods that are recorded as available on-hand at a storage location within an inventory management software but that are not actually present.”
• The attached copies of the web pages of Logistics Viewpoints and SupplyChainDive show that rather than referring to the applicant’s advice and information services specifically, the wording “phantom inventory” indicates information about any inventory that is not available for purchase, which can be due to theft or broken products, for example.
• The attached copy of the applicant’s web page shows that it uses the term “phantom inventory” as a descriptive term, alongside “inventory,” “deals,” and “customer communications.”  These terms are general descriptive terms rather than service marks that show the source of the applicant’s services.

 

Because the applicant’s services are identified broadly enough to include providing advice and information about the management of phantom inventory,” the term “phantom inventory” is descriptive of a feature of the services.  The examining attorney finds that because the proposed mark merely describes the applicant’s services, registration of the applicant’s mark is barred under Section 2(e)(1) of the Trademark Act.

 

In addition to being merely descriptive, the applied-for mark appears to be generic in connection with the identified services and, therefore, incapable of functioning as a source-identifier for applicant’s services.  In re The Am. Acad. of Facial Plastic & Reconstructive Surgery, 64 USPQ2d 1748 (TTAB 2002); In re A La Vieille Russie, Inc., 60 USPQ2d 1895 (TTAB 2001); 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).

 

In response to this issue, the applicant may respond to the refusal by submitting evidence and arguments in support of registration.

 

Additional Information Regarding Descriptiveness 

Due to the descriptive nature of the applied-for mark, the applicant must provide the following information and documentation regarding the services and wording appearing in the mark: 

 

(1)       Fact sheets, instruction manuals, brochures, advertisements and pertinent screenshots of applicant’s website as it relates to the services in the application, including any materials using the terms in the applied-for mark.  Merely stating that information about the services is available on applicant’s website is insufficient to make the information of record.; 

 

(2)       If these materials are unavailable, the applicant should submit similar documentation for services of the same type, explaining how its own services will differ.  If the services feature new technology and information regarding competing services is not available, the applicant must provide a detailed factual description of the services.  The factual information must make clear what the services are and how they are rendered, salient features, and prospective customers and channels of trade.  Conclusory statements will not satisfy this requirement.; and

 

(3)       The applicant must respond to the following questions:  Do the applicant’s services include advice, information, or management of phantom inventory?  Do the applicant’s competitors use the term “phantom inventory” to advertise a feature of their services?  Given that “phantom inventory” a general term used in the retail industry, how is this term not descriptive of the applicant’s services?

 

See 37 C.F.R. §2.61(b); TMEP §§814, 1402.01(e).  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 Information 

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.

 

Respond online to this letter.  Use the TEAS “Response to Office Action” online form to file a response.

 

Trademark Lawyer

Because of the legal issues and strict deadlines involved in the USPTO application process, the applicant may wish to hire a private attorney specializing in trademark matters to represent the applicant in this process and provide legal advice.  Although the undersigned trademark examining attorney is permitted to help an applicant understand the contents of an Office action as well as the application process in general, no USPTO attorney or staff is permitted to give an applicant legal advice or statements about an applicant’s legal rights.  TMEP §§705.02, 709.06. 

 

For attorney referral information, the applicant may consult the American Bar Association’s Consumers’ Guide to Legal Help; an online directory of legal professionals, such as FindLaw®; or a local telephone directory.  The USPTO, however, may not assist an applicant in the selection of a private attorney.  37 C.F.R. §2.11.

 

Information for TEAS Applicants

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.  

 

 

 

/Leigh Caroline Case/

Examining Attorney

Law Office 118

(571) 272-9140

leigh.case@uspto.gov (preferred)

 

 

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 12/15/2018 FOR U.S. APPLICATION SERIAL NO. 88095921

 

Your trademark application has been reviewed.  The trademark examining attorney assigned by the USPTO to your application has written an official letter to which you must respond.  Please follow these steps:

 

(1)  Read the LETTER by clicking on this link or going to http://tsdr.gov.uspto.report/, entering your U.S. application serial number, and clicking 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)  Respond within 6 months (or sooner if specified in the Office action), calculated from 12/15/2018, using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  A response transmitted through TEAS must be received before midnight Eastern Time of the last day of the response period.

 

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. 

 

(3)  Questions about the contents of the Office action itself should be directed to the trademark examining attorney who reviewed your application, identified below. 

 

/Leigh Caroline Case/

Examining Attorney

Law Office 118

(571) 272-9140

leigh.case@uspto.gov (preferred)

 

 

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.