| To: | Thirty Three Threads, Inc. (kstetina@stetinalaw.com) |
| Subject: | U.S. TRADEMARK APPLICATION NO. 88250351 - TOESOX - TOESX-008T3 |
| Sent: | 3/12/2019 11:32:10 AM |
| Sent As: | ECOM114@USPTO.GOV |
| Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 Attachment - 38 Attachment - 39 Attachment - 40 Attachment - 41 Attachment - 42 Attachment - 43 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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U.S. APPLICATION SERIAL NO. 88250351
MARK: TOESOX
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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: Thirty Three Threads, Inc.
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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.
It should be noted at the outset, that the instant application is a duplicate of applicant’s U.S. Serial No. 87503247 (abandoned on January 24, 2019; 20 days after the filing date of the instant application) and, as such, is also being handled consistent with that application. Please see attached.
Therefore, the assigned examining attorney has reviewed the referenced application and determined the following.
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). However, the applicant must respond to the following issue(s).
II. GENERIC:
The applicant filed this application under a Section 2(f) claim of acquired distinctiveness. This claim is a concession that the mark sought to be registered is merely descriptive of applicant’s goods/services. In re Leatherman Tool Grp., Inc., 32 USPQ2d 1443, 1444 (TTAB 1994); see Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 1577, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988). Its inclusion, therefore, renders the merely descriptiveness issue moot, but raises the following generic issue instead (with the sufficiency of acquired distinctiveness claim also discussed herein, in context).
Consequently, registration is refused because the applied-for mark is generic for applicant’s goods/services. Trademark Act Sections 1, 2, 3, and 45, 15 U.S.C. §§1051, 1052, 1053, 1127; see TMEP §§1209.01(c) et seq., 1209.02(b). Thus, applicant’s claim of acquired distinctiveness under Trademark Act Section 2(f) is insufficient to overcome the refusal because no amount of purported proof that a generic term has acquired secondary meaning can transform that term into a registrable trademark or service mark. See 15 U.S.C. §1052(f); In re Bongrain Int’l (Am.) Corp., 894 F.2d 1316, 1317 n.4, 13 USPQ2d 1727, 1728 n.4 (Fed. Cir. 1990); H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 989, 228 USPQ 528, 530 (Fed. Cir. 1986); TMEP §1212.02(i).
“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 at 989-90, 228 USPQ at 530; 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).
Further, a novel spelling or an intentional misspelling that is the ‘phonetic equivalent’ of a generic term is also generic if purchasers would perceive the different spelling as the equivalent of the generic term. See Nupla Corp. v. IXL Mfg. Co., 114 F.3d 191, 196, 42 USPQ2d 1711, 1716 (Fed. Cir. 1997) (holding CUSH-N-GRIP generic for cushioned tool handles); Micro Motion Inc. v. Danfoss A/S, 49 USPQ2d 1628, 1631 (TTAB 1998) (holding MASSFLO generic for mass flowmeters); see also In re ING Direct Bancorp, 100 USPQ2d 1681, 1690 (TTAB 2011) (holding PERSON2PERSON PAYMENT generic for direct electronic funds transfers including electronic payment services between individuals). TMEP §1209.03(j).
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).
Here, the application identifies the goods and/or services as “[f]abric footwear having friction elements on the sole portion to aid in pilates and yoga exercise,” which adequately defines the genus at issue, namely, fabric based socks with individualized opening for toes (and which often come with a non-slip sole and can be for athletic or non-athletic wear).
In this regard, please see attached discussion at http://en.wikipedia.org/wiki/Toe_socks for ‘toes socks’ (the phonetic equivalent of the applicant’s mark TOESOX) stating, in part, “Toe socks (also known as fingersocks, glove socks, 5-toe socks or digital socks) are socks that have been knitted so that each toe is individually encased the same way as fingers within a glove. All sock lengths are available as toe socks, from no-show style to anklet and ankle socks through to knee-high and over-knee socks. They are also available with rubberised undersides, as an alternative to bare feet for yoga.”
Please also see the attached sampling of evidence from:
featuring the sale of toe socks (including those for pilates/yoga or those not limited to an activity, therefore, could include pilates/yoga as well).
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 for these goods.
As such, the above attached evidence shows that the wording “toe socks” refers to fabric based athletic/physical activity/etc. wear socks with individualized holes for the toes and thus the relevant public would understand this designation to refer primarily to that genus of such goods because these socks are available for purchase throughout the marketplace under such a designation.
Finally, as noted above, a novel spelling or an intentional misspelling that is the ‘phonetic equivalent’ of a generic term is also generic if purchasers would perceive the different spelling as the equivalent of the generic term. Therefore, applicant’s mark TOESOX is phonetically equivalent of the correctly spelled generic term TOE SOCKS and is, therefore, generic as well.
- Applicant’s Evidence of Acquired Distinctiveness is Insufficient:
As discussed above, applicant asserted in the application a claim of acquired distinctiveness under Section 2(f) based on the statutory five (5) or more years of substantially exclusive and continuous use of the mark in commerce. See 15 U.S.C. §1052(f).
As also noted above, applicant’s claim of acquired distinctiveness under Trademark Act Section 2(f) is insufficient to overcome the refusal because no amount of purported proof that a generic term has acquired secondary meaning can transform that term into a registrable trademark or service mark. See 15 U.S.C. §1052(f).
Here, applicant is once again referenced to the attached generic evidence for the phonetically equivalent ‘toe socks’ and, hence, also for TOESOX. As also noted above again, a novel spelling or an intentional misspelling that is the ‘phonetic equivalent’ of a generic term is also generic if purchasers would perceive the different spelling as the equivalent of the generic term.
Therefore, applicant’s claim of acquired distinctiveness is denied as its use of the mark is not substantially exclusive and continuous for the statutorily requisite time period due to the generic nature of the mark.
Lastly, please be advised, given the generic nature of the applicant’s mark, an amendment to Supplemental Register (if requested) will be denied for similar reasons.
If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informality.
III. SIGNED & DATED VERIFICATION/DECLARATION REQUIRED:
The application must be signed, and verified ‘or’ supported by a declaration under 37 C.F.R. §2.20. 37 C.F.R. §2.33. No signed verification or declaration was provided. Therefore, the applicant must provide a signed verification or signed declaration attesting to the facts set forth in the application, and attesting that applicant had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the application filing date. 37 C.F.R. §§2.34(a)(2)(i), (a)(3)(i) and (a)(4)(ii); TMEP §§804.02, 806.01(b), 806.01(c), 806.01(d) and 1101.
The following declaration is provided for the applicant's convenience:
The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. 1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; that he/she believes applicant to be entitled to use such mark in commerce; that the applicant had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the application filing date; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; and that all statements made of his/her own knowledge are true and all statements made on information and belief are believed to be true.
_____________________________
(Signature)
_____________________________
(Print or Type Name and Position)
_____________________________
(Date)
IV. CONCLUSION:
Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
If the applicant has any questions or needs assistance in responding to this Office Action, please telephone the assigned examining attorney.
/KaranChhina/
Karanendra S. Chhina
Trademark Attorney
Law Office 114
(571) 272-9447
karan.chhina@uspto.gov
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.
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.
