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:  March 09, 2020

 

 

This Office action is supplemental to and supersedes the previous Office actions issued on January 18, 2019 and August 9, 2019 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 and  requirement:  2(e)1 Refusal finding the mark generic See TMEP §§706, 711.02. 

 

 

PREVIOUS ACTION: In a previous Office action dated January 18, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following:  Trademark Act Section 2(e)1, finding the mark merely descriptive.  In addition, applicant was required to satisfy the following requirements:  amend the identification of services, specify filing basis and provide a signed declaration. 

 

 

Based on applicant’s July 18, 2019 response, the trademark examining attorney issued a New Non Final Office action dated August 9, 2019 in which applicant was required to provide attorney bar information.  Additionally, the Section 2(e)1 refusal and requirements to specify filing basis and provide a signed declaration were continued and maintained.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

 

Applicant filed a Response on February 5, 2020. 

 

 

Based on applicant’s February 5, 2020 response, the trademark examining attorney notes that the following requirements have been satisfied:  requirements to specify filing basis and provide a signed declaration and provide attorney bar information. See TMEP §713.02. 

 

 

Although applicant claim of acquired distinctiveness under Section 2(f), the claim is insufficient to overcome the Trademark Act Section 2(e)1 refusal.  Thus, the trademark examining attorney now issues a New Non Final Office action for the reasons set forth below.

 

 

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

 

•        Section 2(e)1 Refusal – Mark is Generic

 

 

SECTION 2(e)1 REFUSAL – 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 services.  15 U.S.C. §1052(e)(1).  In response, applicant amended the application to add a claim of acquired distinctiveness under Section 2(f).  15 U.S.C. §1052(f).

 

Registration is now refused because the applied-for mark is generic for applicant’s services.  Trademark Act Sections 1, 2, 3 and 45, 15 U.S.C. §§1051, 1052, 1053, 1127; see TMEP §§1209.01(c) et seq., 1209.02(a)(ii).  Thus, applicant’s claim of acquired distinctiveness under Section 2(f) is 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 987, 989-90, 228 USPQ 528, 530 (Fed. Cir. 1986); 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 services as “providing a website featuring information regarding specification standards relating to painting, application of interior and exterior coatings to buildings, and wall coverings”, which adequately defines the genus at issue, that is paint info, or paint information.

 

Regarding the second part of the inquiry, the relevant public is the purchasing or consuming public for the identified goods and/or services.  The Loglan Inst. Inc. v. The Logical Language Grp., 962 F.2d 1038, 1041, 22 USPQ2d 1531, 1533 (Fed. Cir. 1992) (quoting 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 use applicant’s services because there are no restrictions or limitations to the channels of trade or classes of consumers. 

 

As discussed in the previously action, the word “paint” is encompassed in applicant’s identification of services in that “information regarding painting” and “specification standards relating to painting” are listed among applicant’s services; thus the wording is generic of the relevant services.  Additionally, the previously attached dictionary evidence from American Heritage Dictionary online shows that the word “info” is an informal form of the word “information.”    Importantly, the word “information” also appears in applicant’s identification of services; thus the wording PAINT INFO in the applied-for mark is merely generic for applicant’s services, that is “information regarding specifications standards relating to painting”, provided under the mark.   Thus the relevant public would understand this designation to refer primarily to that genus of services because applicant’s services entail providing paint information.

 

 

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 services 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 services.  In re Virtual Indep. Paralegals, LLC, 2019 USPQ2d 111512, at *9 (TTAB 2019) (citing Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 1358, 92 USPQ2d 1626, 1629 (Fed. Cir. 2009); Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 1577, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988); In re Am. Furniture Warehouse Co., 126 USPQ2d 1400, 1403 (TTAB 2018)).

 

 

APPLICANT’S EVIDENCE OF ACQUIRED DISTINCTIVENESS IS INSUFFICIENT

 

With respect to applicant’s claim of acquired distinctiveness, the following evidence was provided in support of such claim:  a statement in the record of 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.  See 37 C.F.R. §2.41.

 

 

If the applied-for mark is ultimately determined to be merely descriptive and not generic, the Section 2(f) evidence is insufficient to show acquired distinctiveness because consumers would understand the wording “paint info” to mean information provided about paint.  Importantly, as set forth above, “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, 1370, 127 USPQ2d 1041, 1048 (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).

 

 

The amount and character of evidence needed to establish acquired distinctiveness depends on the facts of each case and particularly on the nature of the mark sought to be registered.  Roux Labs., Inc. v. Clairol Inc., 427 F.2d 823, 829, 166 USPQ 34, 39 (C.C.P.A. 1970); In re Chevron Intellectual Prop. Grp. LLC, 96 USPQ2d 2026, 2030 (TTAB 2010); TMEP §1212.01.  An applicant’s evidentiary burden of showing acquired distinctiveness increases with the level of descriptiveness of the mark sought to be registered; a more descriptive term requires more evidence.  Royal Crown Co. v. Coca-Cola Co., 892 F.3d at 1365, 127 USPQ2d at 1045 (citing In re Steelbuilding.com, 415 F.3d 1293, 1300, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005)).

 

 

RESPONSE GUIDELINES

 

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

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

 

 

/Oreoluwa Alao/

Oreoluwa Alao

Examining Attorney

Law Office 108

(571) 270-7210

oreoluwa.alao@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 March 09, 2020 for

U.S. Trademark Application Serial No. 88128687

 

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. 

 

 

/Oreoluwa Alao/

Oreoluwa Alao

Examining Attorney

Law Office 108

(571) 270-7210

oreoluwa.alao@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 March 09, 2020, 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.”