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:  May 14, 2020

 

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on April 16, 2020 (“Applicant’s Response”).

 

In a previous Office actions dated March 13, 2019 and October 16, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following:

 

·         Trademark Act Sections 1, 2, 3, and 45 for failure to function as a trademark

 

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 – Failure to Function as a Trademark 

 

SECTIONS 1, 2, 3 AND 45 REFUSAL – FAILURE TO FUNCTION AS A TRADEMARK

 

 For the reasons set forth below, the refusal is now made FINAL under Trademark Act Sections 1, 2, 3 and 45 for failure to function as a trademark.  See 15 U.S.C. §§1051, 1052, 1127; 37 C.F.R. §2.63(b).

 

Registration is refused because the applied-for mark is a slogan or term that does not function as a trademark or service mark to indicate the source of applicant’s goods and/or services and to identify and distinguish them from others.  Trademark Act Sections 1, 2, 3, and 45, 15 U.S.C. §§1051-1053, 1127.  In this case, the applied-for mark is a commonplace term, message, or expression widely used by a variety of sources that merely conveys an ordinary, familiar, well-recognized concept or sentiment.  See In re Wal-Mart Stores, Inc., 129 USPQ2d 1148, 1160 (TTAB 2019) (holding INVESTING IN AMERICAN JOBS not registrable for retail store services or promoting public awareness of goods made or assembled by American workers because the mark would be perceived merely as a commonly-used informational message); In re Volvo Cars of N. Am., Inc., 46 USPQ2d 1455, 1460-61 (TTAB 1998) (holding DRIVE SAFELY not registrable for automobiles and automobile parts because the mark would be perceived merely as an “everyday, commonplace safety admonition”). 

 

Terms and expressions that merely convey an informational message are not registrable.  In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229 (TTAB 2010).  Determining whether the term or expression functions as a trademark or service mark depends on how it would be perceived by the relevant public.  In re Wal-Mart Stores, Inc., 129 USPQ2d at 1150 (citing D.C. One Wholesaler, Inc. v. Chien, 120 USPQ2d 1710, 1713 (TTAB 2016)); In re Eagle Crest, Inc., 96 USPQ2d at 1229; TMEP §1202.04.  “The more commonly a [term or expression] 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(b).

 

The applicant argues that this refusal is a specimen-based refusal and as this applicant has been filed on an intent to use basis so no specimens are available and the failure to function is premature.  However, the issue here is the mark is a common phrase, as noted below, and thus does not function.  Even with a specimen, the mark would still be a common phrase that would fail to function based on the use of the phrase in the marketplace.

 

The attached evidence from www.twitter.com, frontiergroup.com, www.greenbiz.com, redtri.com, www.thelifeimpact.com, grist.org, www.csmonitor.com, environmentamerica.org, www.flocabulary.com, www.dw.com, www.sustainability.google, www.washingtonpost.com, rmi.org, prospect.org, and www.youtube.com shows that this term or expression is commonly used to refer to energy that does not release carbon emissions and other means of not releasing carbon emissions and conveys a common message about the environmentally-friendly practices in manufacturing, develop, rendering, or other activities related to goods and services.  Because consumers are accustomed to seeing this term or expression commonly used in everyday speech by many different sources, they would not perceive it as a mark identifying the source of applicant’s goods and/or services but rather as only conveying an informational message. 

 

An applicant may not overcome this refusal by amending the application to seek registration on the Supplemental Register or asserting a claim of acquired distinctiveness under Section 2(f).  TMEP §1202.04(d); see In re Eagle Crest, Inc., 96 USPQ2d at 1229.  Nor will submitting a substitute specimen overcome this refusal.  See TMEP §1202.04(d).

 

RESPONSE GUIDELINES

 

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.

 

How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

 

/Katherine Ferrell/

Examining Attorney

Law Office 126

(571)-270-3576

Katherine.Ferrell@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 May 14, 2020 for

U.S. Trademark Application Serial No. 88220232

 

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. 

 

 

/Katherine Ferrell/

Examining Attorney

Law Office 126

(571)-270-3576

Katherine.Ferrell@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 May 14, 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.”