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:  September 05, 2019

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

INTRODUCTION

 

This Office action is in response to applicant’s communications filed on 8/21/2019.

 

In a previous Office action dated 3/15/2019, the trademark examining attorney refused registration of the applied-for mark under Trademark Act Section 2(e)1. Applicant has responded by moving to the Supplemental Register. Applicant’s request is hereby refused for the following reasons discussed below. 

 

SUMMARY OF ISSUES

• REFUSAL ON SUPPLEMENTAL REGISTER: MARK IS GENERIC

·       AMENDMENT TO SUPPLEMENTAL REGISTER UNACCEPTABLE

·       MUST CLARIFY EXPIRATION DATE OF FOREIGN REGISTRATION

 

REFUSAL ON SUPPLEMENTAL REGISTER: MARK IS GENERIC

 

“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 goods and/or services as “Office chairs” and “furniture”, which adequately defines the genus at issue.

 

Regarding the second part of the inquiry, the relevant public is the purchasing or consuming public for the identified goods and/or services.  Sheetz of Del., Inc. v. Doctor’s Assocs. Inc., 108 USPQ2d 1341, 1351 (TTAB 2013) (citing 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 purchase applicant’s goods, because there are no restrictions or limitations to the channels of trade or classes of consumers).

 

“GLIDING” describes a key feature of applicant’s goods. This is important because the name of a central feature, or a main characteristic of goods may be generic for those goods.  See In re Cordua Rests., Inc., 823 F.3d 594, 604, 118 USPQ2d 1632, 1637-38 (Fed. Cir. 2016) (affirming the Trademark Trial and Appeal Board’s holding of CHURRASCOS (a type of grilled meat) generic for restaurant services); In re Hotels.com LP, 573 F.3d 1300, 1304, 91 USPQ2d 1532, 1535 (Fed. Cir. 2009) (affirming the Trademark Trial and Appeal Board’s holding of HOTELS.COM generic for travel agency services, namely, making reservations and bookings for temporary lodging, and providing information about temporary lodging); In re Emergency Alert Sols. Grp., LLC, 122 USPQ2d 1088, 1091-93 (TTAB 2017) (holding LOCKDOWN ALARM generic for training services focusing on the use of and response to lockdown alarms); In re Meridian Rack & Pinion, 114 USPQ2d 1462, 1465-66 (TTAB 2015) (holding BUYAUTOPARTS.COM generic for on-line retail store services featuring auto parts); TMEP §1209.03(v); see also A.J. Canfield Co. v. Honickman, 808 F.2d 291, 292, 1 USPQ2d 1364, 1365 (3d Cir. 1986) (holding CHOCOLATE FUDGE generic for diet sodas).  Thus, a term does not need to be the name of a specific product and/or service to be found generic.  Any term that the relevant public understands to refer to the genus can be generic.  Royal Crown Co. v. Coca-Cola Co., 892 F.3d 1358, 1367, 127 USPQ2d 1041, 1046 (Fed. Cir. 2018) (quoting In re Cordua Rests., Inc., 823 F.3d at 603, 118 USPQ2d at 1637 (Fed. Cir. 2016)).

 

The following attached evidence shows that the wording “GLIDING” in the applied-for mark refers to both a feature - and an entire category - of “furniture” and “office chairs” that are unique in that they offer the feature of “gliding” back and forth, like a rocking chair rocks, and this feature of “GLIDING” is so well-known and popular that these types of chairs have earned their own category, known as “Gliders.”

 

• http://www.la-z-boy.com/b/chairs/_/N-otsk94?WT.srch=1&cid=search&cid_account=USA_Tier1&cid_campaign=LZB_NonBrand_Google_Chairs_Gliding_NA_NA_NA_Exact&utm_source=GOOGLE&utm_medium=cpc&utm_campaign=LZB_NonBrand_Google_Chairs_Gliding_NA_NA_NA_Exact&gclid=Cj0KCQjwwb3rBRDrARIsALR3XeY8doQ_llW3uBynzEKPMGGsyjh0Om8mAu-4z3YUeoMj-IVwGFdosRkaAlLvEALw_wcB&gclsrc=aw.ds#/b/chairs/gliding-motion/_/N-otsk94Z1admvkb (LAZBOY offering “Glider chairs” as a chair category, touting the benefits of the chair’s “GLIDING” feature).
• http://www.wayfair.com/keyword.php?keyword=gliding+chair+with+ottoman&refid=GX184837292603.~b&position=1t2&network=g&pcrid=184837292603&device=c&targetid=dsa-44747220055&channel=GoogleIntent&gclid=Cj0KCQjwwb3rBRDrARIsALR3XeamgDHJj1rfYwa9v303LDjFWj5Uyn4sbBkDxifX5hPAIsFlkUx6DVkaAv0cEALw_wcB (Wayfair offering “Glider” chairs and ottomans, touting the benefits of the “GLIDING” feature).
• http://www.target.com/c/gliders-ottomans-nursery-furniture-baby/-/N-5xtgb?Nao=0 (Target offering “GLIDERS” as its own chair category, praising their ability to engage in “GLIDING.”)
• http://www.amazon.com/Glider-Chairs-Ottomans-Rocking-Chairs/b?ie=UTF8&node=239222011 (Amazon offering “Gliders” as their own category of chairs, and calling many chairs “gliders.”)
• http://nymag.com/strategist/article/best-glider-rockers.html (NY Mag lists “The Best Glider Rockers for Nursing” and explains their “GLIDING” feature as a big help in nursing babies.)
• http://www.macys.com/shop/furniture/recliners-accent-chairs/Chair_feature/Glider?id=36166 (Macy’s has their own category of furniture called “Glider chairs”.)
• http://www.houzz.com/products/gliders (Refers to gliding chairs as “A staple in nurseries everywhere” since “gliders have help put babies, and grownups, to sleep for many generations.”)

 

Thus, the applied-for mark is the generic term is a feature of applicant’s goods so essential that it has become a well-known category of the latter.

 

“GLIDING” acts as an adverb, describing what applicant’s goods do. Use of a term as an adjective or adjectival phrase does not prevent that term from being generic if it refers to the relevant genus or category of goods and/or services.  See In re Serial Podcast, LLC, 126 USPQ2d 1061, 1068 (TTAB 2018) (quoting TMEP §1209.01(c)(ii) and cases cited therein).  Thus, an adjective or adjectival phrase may be generic if it denotes a narrower subcategory of the identified goods and/or services.  See, e.g., In re Northland Aluminum Prods. Inc., 777 F.2d 1556, 1560, 227 USPQ 961, 964 (Fed. Cir. 1985) (holding BUNDT generic for ring cake mixes); In re Mecca Grade Growers, LLC, 125 USPQ2d 1950, 1959 (TTAB 2018) (holding MECHANICALLY FLOOR-MALTED generic for malt used for brewing and distilling and for processing agricultural grain); TMEP §1209.01(c)(ii). Here, the mark refers to an entire category of applicant’s goods, as demonstrated by the above-cited evidence, and, as such, is generic.

 

Applicant cannot overcome this refusal by submitting a claim of acquired distinctiveness under Trademark Act Section 2(f).  See 15 U.S.C. §1052(f).  Such a claim would be insufficient 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, 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).

 

Applicant should also note the following requirement/refusal.

 

AMENDMENT TO SUPPLEMENTAL REGISTER UNACCEPTABLE

 

Registration is refused on the Supplemental Register because the proposed mark is not in lawful use in commerce, as required by Trademark Act Section 23.  See 15 U.S.C. §1091(a); 37 C.F.R. §2.47(a); TMEP §714.05(a)(i).  Specifically, this application is in part based on applicant’s bona fide intention to use the mark in commerce under Section 1(b), and applicant has not yet submitted an amendment to allege use under 37 C.F.R. §2.76.  See 37 C.F.R. §§2.47(d), 2.75(b); TMEP §§815.02, 1102.03.

 

Option to delete Section 1(b) basis. The application specifies both an intent to use basis under Trademark Act Section 1(b) and reliance on a foreign registration(s) under Section 44(e).  See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.34(a)(2)-(3).  However, the foreign registration alone may serve as a basis for obtaining a U.S. registration.  See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).  If applicant wants to rely solely on the foreign registration under Section 44(e) as the basis, applicant can request deletion of the Section 1(b) basis.  See 37 C.F.R. §2.35(b)(1); TMEP §806.04. 

 

Therefore, this refusal will be withdrawn if applicant (1) requests to delete the Section 1(b) filing basis, or (2) submits an amendment to allege use that meets the requirements of 37 C.F.R. §2.76(b), (c).  See TMEP §§815.02, 1102.03. Note that withdrawing the amendment to the Supplemental Register is not advised because the refusal under Section 2(e)(1) would be reinstated.

 

Applicant should also note the following requirement.

 

MUST CLARIFY EXPIRATION DATE OF FOREIGN REGISTRATION

 

In its 8/21/2019 response, applicant has submitted a foreign certificate of trademark registration from Japan. The registration date is listed as July 12, 2019. The Trademark Manual of Examining Procedure (TMEP) lists the renewal period for Japan as a period of ten (10) years from the date of registration. However, applicant has submitted the Foreign Expiration date at 6/21/2028, far more than ten (1) years into the future. Applicant must clarify this inconsistency.

 

 

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.

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

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  

 

 

Becker, Joseph (Trademark)

/Joseph Becker/

Trademark Examining Attorney, Law Office 117

United States PTO

(571) 270-5493

Joseph.Becker1@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 05, 2019 for

U.S. Trademark Application Serial No. 88231504

 

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. 

 

 

Becker, Joseph (Trademark)

/Joseph Becker/

Trademark Examining Attorney, Law Office 117

United States PTO

(571) 270-5493

Joseph.Becker1@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 05, 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.”