To: | ALCIVAR, CYNTHIA (richard@4trademark.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88176473 - GER - N/A |
Sent: | 2/14/2019 3:28:26 PM |
Sent As: | ECOM109@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88176473
MARK: GER
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: ALCIVAR, CYNTHIA
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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: 2/14/2019
The referenced application has been reviewed by the assigned trademark examining attorney. 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.
Search Results
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).
Section 2(e)(1) Merely Descriptive Refusal
Registration is refused because the applied-for mark merely describes a feature of applicant’s goods and services. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.
A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods and/or services. 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)).Generally, if the individual components of a mark retain their descriptive meaning in relation to the goods and/or 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).
Here, applicant seeks registration of “GER” for “Downloadable software and application software for the provision of online price comparisons of sports equipment, sporting goods, sports memorabilia and clothing; downloadable software and application software for the provision of referral services related sports equipment, sporting goods, sports memorabilia and clothing; downloadable software and application software for the provision of a searchable directory of sports equipment, sporting goods, sports memorabilia and clothing information for obtaining data and information from others via the internet; downloadable software and application software for searching, compiling, indexing and organizing sports equipment, sporting goods, sports memorabilia and clothing information; Temporary use of Non-Downloadable software for the provision of online price comparisons of sports equipment, sporting goods, sports memorabilia and clothing; Temporary use of Non-Downloadable software for the provision of referral services related sports equipment, sporting goods, sports memorabilia and clothing; Temporary use of Non-Downloadable software for the provision of a searchable directory of sports equipment, sporting goods, sports memorabilia and clothing information for obtaining data and information from others via the internet; Temporary use of Non-Downloadable software software for searching, compiling, indexing and organizing sports equipment, sporting goods, sports memorabilia and clothing information; Price comparison services; Promoting the goods and services of others by providing a web site featuring user-submitted content in the nature of price-comparison information, product reviews, links to the retail web sites of others, and discount information; Promoting the goods and services of others by providing a web site featuring coupons, rebates, price-comparison information, product reviews, links to the retail web sites of others, and discount information; Lead generation, providing sales leads, and providing referral services in the sports equipment, sporting goods, sports memorabilia and clothing industry; Matching buyers and sellers of sports equipment, sporting goods, sports memorabilia and clothing via a global computer network; Connecting buyers and sellers of goods and services via a global computer network; Promoting the goods and services of others by providing a web site featuring price-comparison information, product reviews, vendor reviews, links to the retail web sites of others, and discount information; providing on-line directory information services featuring hyperlinks to other web sites regarding the business and services of others”.
The word “GER” with an accent over the “E” is a novel spelling and phonetic equivalent of the word “GEAR”. A novel spelling or an intentional misspelling that is the phonetic equivalent of a merely descriptive word or term is also merely descriptive if purchasers would perceive the different spelling as the equivalent of the descriptive word or term. See In re Quik-Print Copy Shop, Inc., 616 F.2d 523, 526 & n.9, 205 USPQ 505, 507 & n.9 (C.C.P.A. 1980) (holding “QUIK-PRINT,” phonetic spelling of “quick-print,” merely descriptive of printing and photocopying services); In re Calphalon Corp., 122 USPQ2d 1153, 1163 (TTAB 2017) (holding “SHARPIN”, phonetic spelling of “sharpen,” merely descriptive of cutlery knife blocks with built-in sharpeners); In re Carlson, 91 USPQ2d 1198, 1203 (TTAB 2009) (holding “URBANHOUZING,” phonetic spelling of “urban” and “housing,” merely descriptive of real estate services); TMEP §1209.03(j).
The word “GEAR” is defined as “Equipment, such as tools or clothing, used for a particular activity: fishing gear”. See the attached dictionary definition. Applicant goods and services feature information and comparisons regard sporting gear.
“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 and/or services 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).
Accordingly, knowing what applicant’s goods and services are, consumers would understand the word “GER” (a phonetic equivalent of the word GEAR) to describe the feature of applicant’s goods and services.
As such, registration on the Principal Register must be refused under Section 2(e)(1) of the Trademark Act.
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.
If applicant files an acceptable allegation of use and also amends to the Supplemental Register, the application effective filing date will be the date applicant met the minimum filing requirements under 37 C.F.R. §2.76(c) for an amendment to allege use. TMEP §§816.02, 1102.03; see 37 C.F.R. §2.75(b). In addition, the undersigned trademark examining attorney will conduct a new search of the USPTO records for conflicting marks based on the later application filing date. TMEP §§206.01, 1102.03.
Benefits of Registration on the Supplemental Register
(1) Use of the registration symbol ® with the registered mark in connection with the designated goods and/or services, which provides public notice of the registration and potentially deters third parties from using confusingly similar marks.
(2) Inclusion of the registered mark in the USPTO’s database of registered and pending marks, which will (a) make it easier for third parties to find it in trademark search reports, (b) provide public notice of the registration, and thus (c) potentially deter third parties from using confusingly similar marks.
(3) Use of the registration by a USPTO trademark examining attorney as a bar to registering confusingly similar marks in applications filed by third parties.
(4) Use of the registration as a basis to bring suit for trademark infringement in federal court, which, although more costly than state court, means judges with more trademark experience, often faster adjudications, and the opportunity to seek an injunction, actual damages, and attorneys’ fees and costs.
(5) Use of the registration as a filing basis for a trademark application for registration in certain foreign countries, in accordance with international treaties.
See 15 U.S.C. §§1052(d), 1091, 1094; J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition §§19:33, 19:37 (rev. 4th ed. Supp. 2017).
If applicant responds to the refusal, applicant must also respond to the requirement set forth below.
Classification of Goods and Services
Class 009: Downloadable software and application software for the provision of online price comparisons of sports equipment, sporting goods, sports memorabilia and clothing; downloadable software and application software for the provision of referral services related sports equipment, sporting goods, sports memorabilia and clothing; downloadable software and application software for the provision of a searchable directory of sports equipment, sporting goods, sports memorabilia and clothing information for obtaining data and information from others via the internet; downloadable software and application software for searching, compiling, indexing and organizing sports equipment, sporting goods, sports memorabilia and clothing information; Temporary use of Non-Downloadable software for the provision of online price comparisons of sports equipment, sporting goods, sports memorabilia and clothing;
Class 035: Price comparison services; Promoting the goods and services of others by providing a web site featuring user-submitted content in the nature of price-comparison information, product reviews, links to the retail web sites of others, and discount information; Promoting the goods and services of others by providing a web site featuring coupons, rebates, price-comparison information, product reviews, links to the retail web sites of others, and discount information; Lead generation, providing sales leads, and providing referral services in the sports equipment, sporting goods, sports memorabilia and clothing industry; Matching buyers and sellers of sports equipment, sporting goods, sports memorabilia and clothing via a global computer network; Connecting buyers and sellers of goods and services via a global computer network; Promoting the goods and services of others by providing a web site featuring price-comparison information, product reviews, vendor reviews, links to the retail web sites of others, and discount information; providing on-line directory information services featuring hyperlinks to other web sites regarding the business and services of others
Class 041: Temporary use of Non-Downloadable software for the provision of referral services related sports equipment, sporting goods, sports memorabilia and clothing; Temporary use of Non-Downloadable software for the provision of a searchable directory of sports equipment, sporting goods, sports memorabilia and clothing information for obtaining data and information from others via the internet; Temporary use of Non-Downloadable software software for searching, compiling, indexing and organizing sports equipment, sporting goods, sports memorabilia and clothing information;
Additionally, applicant has provided the application fee for only 1 international class. Thus, not all international classes in the application are covered by the application fee. Because of this disparity, applicant must clarify the number of classes for which registration is sought. See 37 C.F.R. §§2.32(d), 2.86.
Applicant may respond by (1) adding one or more international class(es) to the application, and reclassifying the above goods and/or services accordingly; or (2) deleting from the application the goods and/or services for all but the number of international class(es) for which the application fee was submitted. See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq. If applicant adds one or more international classes to the application, applicant must comply with the multiple-class application requirements specified in this Office action.
Multiple Class Applications
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in at least 3 classes; however, applicant submitted a fee sufficient for only 1 class. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
Advisory: Information for TEAS Plus and TEAS RF 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.
If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney.
/Kathleen Lorenzo/
Trademark Examining Attorney
Law Office 109
(571) 272-5883
kathleen.lorenzo@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.