To: | Recycling Perks LLC (bdempsey@recyclingperks.com) |
Subject: | U.S. Trademark Application Serial No. 88219346 - 6RS REDUCE, REUSE,RECYCLE - N/A |
Sent: | October 11, 2019 04:39:44 PM |
Sent As: | ecom122@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88219346
Mark: 6RS REDUCE, REUSE,RECYCLE
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Correspondence Address:
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Applicant: Recycling Perks LLC
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Reference/Docket No. N/A
Correspondence Email Address: |
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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: October 11, 2019
This Office action is supplemental to and supersedes the previous Office action issued on April 4, 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 requirement: disclaimer needed. See TMEP §§706, 711.02.
In a previous Office action dated April 4, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following: specimen refusal for showing no reference to the services and for having the mark in the drawing and specimen differ. In addition, applicant was required to satisfy the following requirement: clarify the filing basis.
Based on applicant’s response, the trademark examining attorney notes that the following requirement has been satisfied: clarify the filing basis. See TMEP §713.02.
The following refusal has also been obviated: providing a substitute specimen that references the applied-for services. See id.
The following is a SUMMARY OF ISSUES that applicant must address:
• NEW ISSUE: Disclaimer Required
• Specimen Refused – Mark Differs on Drawing and Specimen
Applicant must respond to all issues raised in this Office action and the previous April 4, 2019 Office action, within six (6) months of the date of issuance of this Office action. 37 C.F.R. §2.62(a); see TMEP §711.02. If applicant does not respond within this time limit, the application will be abandoned. 37 C.F.R. §2.65(a).
DISCLAIMER REQUIRED
In this case, applicant must disclaim the wording “REDUCE, REUSE, RECYCLE, REFUSE” because it is not inherently distinctive. These unregistrable terms at best are merely informational about the services and are commonly used in applicant’s particular trade or industry, namely, the marketing industry for sustainability and being environmentally conscious; thus the terms do not function as a mark. See 15 U.S.C. §§1051-1053, 1127; In re Boston Beer Co., 198 F.3d 1370, 1372-74, 53 USPQ2d 1056, 1058-59 (Fed. Cir. 1999); In re Aerospace Optics, Inc., 78 USPQ2d 1861, 1864 (TTAB 2006); TMEP §§807.14(a), 1202.04, 1213.03(a), (b).
Determining whether a term functions as a trademark or service mark depends on how such matter would be perceived by the relevant public. In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229 (TTAB 2010); In re Aerospace Optics, Inc., 78 USPQ2d at 1862; TMEP §1202.04. “The more commonly a [term] is used, the less likely that the public will use it to identify only one source and the less likely that it will be recognized by purchasers as a trademark [or service mark].” In re Hulting, 107 USPQ2d 1175, 1177 (TTAB 2013) (quoting In re Eagle Crest, Inc., 96 USPQ2d at 1229); TMEP §1202.04.
The attached evidence from Curb Your Impact, Peny Rheol, and the Prosperous Way Down blog shows that the terms “reduce”, “reuse”, “recycle”, and “refuse” are commonly used by those in the sustainability field as terms in the “6Rs” of promoting a sustainable and eco-friendly lifestyle. Because consumers are accustomed to seeing this term commonly used by those in the sustainability field to impart information to consumers, they will perceive these terms only as informational matter rather than as a service mark that identifies the source of applicant’s services.
• http://curbyourimpact.com/reduce-reuse-recycle/
• http://penyrheol-comp.net/technology/wp-content/uploads/sites/2/2014/06/6-Rs1.pdf
• http://prosperouswaydown.com/6rs-making-sustainable-impact/
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “REDUCE”, “REUSE”, “RECYCLE” and “REFUSE” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
SPECIMEN REFUSED – MARK DIFFERS ON DRAWING AND SPECIMEN
Registration is refused because the specimen does not show the mark in the drawing in use in commerce in International Class 35, which is required in the application. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a), 1301.04(g)(i). The mark appearing on the specimen and in the drawing must match; that is, the mark in the drawing “must be a substantially exact representation of the mark” on the specimen. See 37 C.F.R. §2.51(a)-(b); TMEP §807.12(a).
In this case, the specimen displays the mark as 6Rs in a stylized form with the wording REDUCE, REUSE, RECYCLE, REDEEM, REBUY, REFUSE surrounding the 6Rs, with additional wording following these terms to explain what REDUCE, REUSE, RECYCLE, REDEEM, REBUY, REFUSE all constitute. However, the drawing displays the mark as 6RS REDUCE, REUSE, RECYCLE REDEEM, REBUY,REFUSE. The mark on the specimen does not match the mark in the drawing because the mark in the specimen has plenty of additional matter that cannot be separated out from the mark in the drawing. Applicant has thus failed to provide the required evidence of use of the mark in commerce. See TMEP §807.12(a).
Applicant may respond to this refusal by satisfying one of the following:
(1) Submit a different specimen (a verified “substitute” specimen) for each applicable international class that (a) shows the mark in the drawing in actual use in commerce for the goods and/or services in the application or amendment to allege use, and (b) 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.
Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and webpages that show the mark used in the actual sale, rendering, or advertising of the services. See TMEP §1301.04(a), (h)(iv)(C).
(2) Submit a request to amend the filing basis to intent to use under Section 1(b), for which no specimen is required. This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.
The USPTO will not accept an amended drawing submitted in response to this refusal because the changes would materially alter the drawing of the mark in the original application or as previously acceptably amended. See 37 C.F.R. §2.72(a)-(b); TMEP §807.14. Specifically, amending the drawing would add new searchable elements that alter the commercial impression of the mark as a whole.
For more information about drawings and instructions on how to satisfy these response options online using the Trademark Electronic Application System (TEAS) form, see the Drawing webpage.
RESPONSE GUIDELINES
Response guidelines. For this application to proceed, applicant must explicitly address each refusal and 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.
Because of the legal technicalities and strict deadlines of the trademark application process, applicant may wish to hire a private attorney who specializes in trademark matters to assist in the process. The assigned trademark examining attorney can provide only limited assistance explaining the content of an Office action and the application process. USPTO staff cannot provide legal advice or statements about an applicant’s legal rights. TMEP §§705.02, 709.06. See Hiring a U.S.-licensed trademark attorney for more information.
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 nonfinal Office action
/Harini Ganesh/
Harini Ganesh
Trademark Examining Attorney
Law Office 122
571-272-5128
harini.ganesh@uspto.gov
RESPONSE GUIDANCE