Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

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:  September 23, 2019

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on August 9, 2019.

 

In a previous Office action dated February 10, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following:

• Sections 1, 2, and 45 Refusal – Ornamental
• Applicant’s Section 2(f) Claim Insufficient

 

In addition, applicant was required to satisfy the following requirement(s): 

• Description of Mark – Amendment Required

 

In applicant’s response, argued against the refusal and provided an amended description of mark.

 

Based on applicant’s response, the trademark examining attorney notes that the following requirement(s) have been satisfied: Description of Mark – Amendment Required.  See TMEP §§713.02, 714.04. 

 

After careful consideration of applicant’s evidence and arguments, the examining attorney finds them unpersuasive.  Accordingly, for the reasons set forth below, the trademark examining attorney maintains and now makes FINAL the refusal(s) and/or requirement(s) in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

• Sections 1, 2, and 45 Refusal – Ornamental
• Applicant’s Section 2(f) Claim Insufficient

 

SECTIONS 1, 2, AND 45 REFUSAL – ORNAMENTAL

 

Registration is refused because the applied-for mark as used on the specimen of record is merely a decorative or ornamental feature of applicant’s clothing and, thus, does not function as a trademark to indicate the source of applicant’s clothing and to identify and distinguish applicant’s clothing from others.  Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051-1052, 1127; see In re Lululemon Athletica Can. Inc., 105 USPQ2d 1684, 1689 (TTAB 2013); In re Pro-Line Corp., 28 USPQ2d 1141, 1142 (TTAB 1993); TMEP §§904.07(b), 1202.03 et seq.

 

The size, location, dominance, and significance of the alleged mark as used on the goods are all relevant factors in determining the commercial impression of the applied-for mark.  See, e.g., In re Peace Love World Live, LLC, 127 USPQ2d 1400, 1403 (TTAB 2018) (quoting In re Hulting, 107 USPQ2d 1175, 1178 (TTAB 2013)); In re Lululemon Athletica Can. Inc., 105 USPQ2d at 1687 (quoting In re Right-On Co., 87 USPQ2d 1152, 1156 (TTAB 2008)); TMEP §1202.03(a).

 

With respect to clothing, consumers may recognize small designs or discrete wording as trademarks, rather than as merely ornamental features, when located, for example, on the pocket or breast area of a shirt.  See TMEP §1202.03(a).  Consumers may not, however, perceive larger designs or slogans as trademarks when such matter is prominently displayed across the front of a t-shirt.  See In re Pro-Line Corp., 28 USPQ2d at 1142; In re Dimitri’s Inc., 9 USPQ2d 1666, 1667-68 (TTAB 1988); TMEP §1202.03(a), (b), (f)(i), (f)(ii).

 

In this case, the submitted specimen shows the applied-for mark, VANS & design, located directly on the upper-center area of the shirt, where ornamental elements often appear.  See TMEP §1202.03(a), (b).  Furthermore, the mark is displayed in a relatively large size on the clothing such that it dominates the overall appearance of the goods. 

 

Therefore, consumers would view the applied-for mark as a decorative or ornamental feature of the goods, rather than as a trademark to indicate the source of applicant’s goods and to distinguish them from others.

 

In applicant’s response, applicant argues that the mark makes a unitary commercial impression and consists of the well-known VANS house mark, and that applying oversized composite trademarks to apparel has become customary in the industry and therefore consumers have been conditioned to viewing such marks as source identifiers.  Applicant’s arguments are unpersuasive for the following reasons.

 

In applicant’s response, applicant argues that the mark makes a unitary commercial impression that consists of the well-known VANS house mark.  In addition, applicant argues that the applied-for mark has been used in a consistent manner over time to ensure consumers view it as a source identifier.  However, applicant has not provided any evidence demonstrating this use.  As made clear below, acquired distinctiveness and/or secondary source must demonstrate use and recognition of the applied-for mark, not merely use or recognition of a house mark.  In this case, applicant has provided no evidence regarding acquired distinctiveness or secondary source.

 

In addition, applicant argues that it is relevant practice in the apparel industry to apply an oversized trademark in the precise location as the applicant’s mark, and applicant provides images of third parties using oversized marks on tops.  Applicant’s evidence is unpersuasive.  As the attached evidence demonstrates, these oversized third party marks are also commonly used in more source identifying capacities on neck tags, where marks are more commonly found in the clothing and apparel industry.  See attached third party evidence of the exact design of oversized Levi’s, New Balance, The North Face, and Supreme marks from applicant’s evidence also used in a smaller capacity on a neck tag, where source identifying marks are commonly found in the apparel industry at http://thecaptainsvintage.com/products/80s-levis-off-white-plaid-pearl-snap-shirt-medium; http://poshmark.com/listing/new-balance-t-shirt-5c0981a1f63eeae12562a855; http://thestyleraconteur.com/category/brands/the-north-face/; http://www.grailed.com/listings/6821502-supreme-2012-supreme-buddha-mantra-print-design-navy-blue-t-shirt.  Unlike these third party marks, applicant has provided no evidence that the exact applied-for mark has enough use to have either acquired distinctiveness or secondary source.  Accordingly, applicant’s arguments are unpersuasive.

 

In appropriate circumstances, applicant may overcome this refusal by satisfying one of the following options:

 

(1)        Submit a different specimen (a verified “substitute” specimen) that was in actual use in commerce at least as early as the filing date of the application (or prior to the filing of an amendment to allege use) and that shows proper trademark use for the identified goods in International Class 25.  Examples of acceptable specimens that show non-ornamental use on clothing include hang tags and labels used inside a garment.

 

(2)        Amend to the Supplemental Register, which is a second trademark register for marks not yet eligible for registration on the Principal Register, but which may become capable over time of functioning as source indicators.

 

(3)        Claim acquired distinctiveness under Trademark Act Section 2(f) by submitting evidence that the applied-for mark has become distinctive of applicant’s goods; that is, proof that applicant’s extensive use and promotion of the mark allowed consumers now directly to associate the mark with applicant as the source of the goods.

 

(4)        Submit evidence that the applied-for mark is an indicator of secondary source; that is, proof that the mark is already recognized as a source indicator for other goods or services that applicant sells/offers.    

 

(5)        Amend the filing basis to intent to use under Section 1(b).  This option will later necessitate additional fee(s) and filing requirements.

 

For an overview of the response options above and instructions on how to satisfy each option online using the Trademark Electronic Application System (TEAS) form, see the Ornamental Refusal webpage.

 

APPLICANT’S SECTION 2(F) CLAIM INSUFFICIENT

 

In applicant’s response, applicant provided no argument or additional evidence related to a Section 2(f) claim.  Accordingly, this refusal is made FINAL.

 

Applicant asserted a claim of acquired distinctiveness under Trademark Act Section 2(f) based on applicant’s use of the mark in commerce with applicant’s goods for five years prior to the date on which the claim is made.  See 15 U.S.C. §1052(f).  However, “evidence of five years’ use alone is not sufficient to show acquired distinctiveness of a mark that is mere ornamentation. Concrete evidence that the proposed mark is perceived as a mark for the relevant goods or services is required to establish distinctiveness.” TMEP §1202.03(d); See In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985).  Applicant may respond by providing additional evidence of acquired distinctiveness.

 

An applicant bears the burden of proving that a mark has acquired distinctiveness under Trademark Act Section 2(f).  In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 1335, 116 USPQ2d 1262, 1264 (Fed. Cir. 2015) (citing In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1422 (Fed. Cir. 2005)); TMEP §1212.01.  “To show that a mark has acquired distinctiveness, an applicant must demonstrate that the relevant public understands the primary significance of the mark as identifying the source of a product or service rather than the product or service itself.”  In re Steelbuilding.com, 415 F.3d at 1297, 75 USPQ2d at 1422. 

 

To support the claim of acquired distinctiveness, applicant may respond by submitting other evidence.  See TMEP §1212.02(g).  Such evidence may include “advertising expenditures, sales success, length and exclusivity of use, unsolicited media coverage, and consumer studies (linking the name to a source).”  In re Change Wind Corp., 123 USPQ2d 1453, 1467 (TTAB 2017) (quoting In re Steelbuilding.com, 415 F.3d 1293, 1300, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005)).  A showing of acquired distinctiveness need not consider all of these types of evidence; no single factor is determinative.  In re Steelbuilding.com, 415 F.3d at 1300, 75 USPQ2d at 1424; see TMEP §§1212.06 et seq.  Rather, the determination involves assessing all of the circumstances involving the use of the mark.  See In re Steelbuilding.com, 415 F.3d at 1300, 75 USPQ2d at 1424 (citing Thompson Med. Co., Inc. v. Pfizer Inc., 753 F.2d 208, 217, 225 USPQ2d 124, 131-32 (Fed. Cir. 1985)).

 

If applicant cannot submit additional evidence to support the claim of acquired distinctiveness, applicant may respond to the refusal by arguing in support of registration and/or amending the application to seek registration on the Supplemental Register.  See 15 U.S.C. §1091(a); 37 C.F.R. §§2.47, 2.75(a); TMEP §§801.02(b), 816.  If applicant amends the application to the Supplemental Register, applicant is not precluded from submitting evidence and arguments against this refusal.  TMEP §816.04.

 

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 response to this final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB)

 

 

/Heather Schubert/

Heather Schubert

Trademark Examining Attorney

Law Office 103

571-272-5484

heather.schubert@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 September 23, 2019 for

U.S. Trademark Application Serial No. 88206479

 

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. 

 

 

/Heather Schubert/

Heather Schubert

Trademark Examining Attorney

Law Office 103

571-272-5484

heather.schubert@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 September 23, 2019, 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.”