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:  July 10, 2019

 

 

 

This Office action is in response to applicant’s communication filed on 6.28.2019.  Based on information and/or documentation in applicant’s response, the trademark examining attorney has determined that this application is not in condition to approve for publication and a new non-final Office action must issue.  37 C.F.R. § 2.61(a); see TMEP §711.02.

 

This Office action is supplemental to and supersedes the previous Office action issued on 3.29.2019 in connection with this application.  The assigned trademark examining attorney inadvertently omitted a refusal of registration relevant to the mark in the subject application.  See TMEP §§706, 711.02.  Specifically, the examining attorney omitted a refusal of registration under Section 2(e)(1) of the Trademark Act.

 

The trademark examining attorney apologizes for any inconvenience caused by the delay in raising this issue(s). 

 

Based on applicant’s response, the trademark examining attorney notes that the following requirement has been satisfied: requirement to clarify the identification of goods.  See TMEP §713.02. 

 

SUMMARY OF ISSUES

 

• Prior-Filed Application Advisory
• Section 2(e)(1) Refusal – Merely Descriptive
• Generic Advisory

 

PRIOR-FILED APPLICATION ADVISORY

 

Applicant was previously provided information regarding pending U.S. Application Serial No(s). 87855767, which may present a bar to registration of applicant’s mark based on a likelihood of confusion under Trademark Act Section 2(d).  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  In response, applicant argued that the mark in the pending application is not likely to cause confusion with applicant’s mark.  Specifically, applicant argued “Before submitting the current Art Mark application we are discussing, I submitted an application for the word mark "paq": #87249934. This Word Mark application of mine predates the referenced application number you provided. My application was to be applied to Goods and Services (Backpacks, book bags, sports bags, bum bags etc.) My application was denied due to similarity of the actual English word "pack." "paq" is a different way to spell "pack" and both are pronounced the same, thus they are easily confused. To use your parlance the name "paq" is merely descriptive. This is a poster-child case, and "paq" has no chance of ever being assigned a word mark from the USPTO. For this reason, I abandoned the Word Mark. The referenced application number you provided for a Word Mark on "PAQ" is for Goods and Services ( Shirts; Pants; Shorts; Sweatpants; Sweatshirts; Jackets; Hats; Sweaters; shoes ) Nowhere does the Word Mark application #87855767 apply to Backpacks, book bags, sports bags, bum bags Duffel bags, etc. Therefore, the application # 87855767 has no chance of conflicting with my current application for two reasons: 1) It is a trademark for a separate product category, and 2) It is not possible to Word Mark "paq" in reference to any product which could be called a "pack." This is the type of product I sell.”

 

With respect to applicant’s argument, regarding the relatedness of the goods and/or the classification of goods, the argument is unpersuasive.  The fact that the Office classifies goods or services in different classes does not establish that the goods and services are unrelated under Trademark Act Section 2(d).  See TMEP §1207.01(d)(v).  The determination concerning the proper classification of goods or services is a purely administrative determination unrelated to the determination of likelihood of confusion.  In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018) (citing Jean Patou, Inc. v. Theon, Inc., 9 F.3d 971, 975, 29 USPQ2d 1771, 1774 (Fed. Cir. 1993)).  Attached to this Office action is evidence from http://www.nike.com/, http://www.adidas.com/us, http://www.express.com/, http://www.michaelkors.com, http://shop.guess.com/en, http://www.gucci.com, and http://www.express.com/  establishing that entities commonly manufacture backpacks and various items of clothing.  Furthermore, despite the difference in appearance of the marks, the marks at issue are identical in sound and meaning.  Generally, the greater degree of similarity between the applied-for mark and the registered mark, the lesser the degree of similarity between the goods and/or services of the parties is required to support a finding of likelihood of confusion.  In re C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015) (citing In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001)); In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009). 

 

With respect to applicant’s argument regarding applicant’s prior-filed but now abandoned application, applicant’s claim of priority of use is not relevant to this ex parte proceeding.  See In re Calgon Corp., 435 F.2d 596, 168 USPQ 278 (C.C.P.A. 1971).  The effective filing date of Serial No. 87855767 is March 29, 2018 which is prior to this application’s filing date of January 9, 2019.

 

The trademark examining attorney has found applicant’s arguments unpersuasive and still believes there may be a likelihood of confusion between applicant’s mark and the mark in the cited prior-pending application, should it register.

 

SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE

Applicant has applied to register the mark “PAQ” for use in connection with “Backpack straps; Backpacks; Backpacks compatible with personal hydration systems, sold empty; Backpacks with rolling wheels; book bags, sports bags, bum bags, wallets and handbags; Carry-on bags; Duffel bags; Duffel bags for travel; Hiking bags; Messenger bags; Shoulder bags; Tote bags; Travel bags; Travelling bags; Garment bags for travel; Hard-sided and soft-sided carry-on bags and gym bags; Military duffle bags, garment bags for travel, tote bags, shoulder bags and backpacks; Schoolchildren's backpacks; Small backpacks; Wheeled tote bags” in Class 18.

 

Registration is refused because the applied-for mark merely describes a characteristic, purpose, or intended use of applicant’s goods.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

 

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods and/or services.  TMEP §1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)). 

 

The applied-for mark “PAQ” is the phonetic equivalent term for the word “pack”.  A novel spelling or an intentional misspelling that is the phonetic equivalent of a merely descriptive word or term is also merely descriptive if purchasers would perceive the different spelling as the equivalent of the descriptive word or term.  See In re Quik-Print Copy Shop, Inc., 616 F.2d 523, 526 & n.9, 205 USPQ 505, 507 & n.9 (C.C.P.A. 1980) (holding “QUIK-PRINT,” phonetic spelling of “quick-print,” merely descriptive of printing and photocopying services); In re Calphalon Corp., 122 USPQ2d 1153, 1163 (TTAB 2017) (holding “SHARPIN”, phonetic spelling of “sharpen,” merely descriptive of cutlery knife blocks with built-in sharpeners); In re Carlson, 91 USPQ2d 1198, 1203 (TTAB 2009) (holding “URBANHOUZING,” phonetic spelling of “urban” and “housing,” merely descriptive of real estate services); TMEP §1209.03(j).  The specimen of use shows the mark used on a backpack.  As shown by the attached dictionary evidence, the term “pack” is used to describe bags and/or the function of the goods in that they are used for storing objects such as clothing or personal items. For example:

 

• http://www.lexico.com/en/definition/pack, “A rucksack.” or “Fill (a suitcase or bag) with clothes and other items needed for travel.”
• http://www.merriam-webster.com/dictionary/pack, “an act or instance of packing”, “a method of packing”, “material used in packing”, “to put in a protective container”, “Cram a large number of things into.”, or “Fill (a suitcase or bag) with clothes and other items needed for travel.”
• http://www.ahdictionary.com/word/search.html?q=pack, “A container made to be carried on the body of a person or animal.”, “To place one's belongings in boxes or luggage for transporting or storing.”, or “To fill up with items”.

 

The applied-for mark shows the wording in stylized lettering.  In this case, the stylized lettering does not obviate the refusal. Stylized descriptive or generic wording is registrable only if the stylization creates a commercial impression separate and apart from the impression made by the wording itself.  See In re Cordua Rests., Inc., 823 F.3d 594, 606, 118 USPQ2d 1632, 1639-40 (Fed. Cir. 2016); In re Northland Aluminum Prods., Inc., 777 F.2d 1556, 1561, 227 USPQ 961, 964 (Fed. Cir. 1985); TMEP §1209.03(w).  Common and ordinary lettering with minimal stylization, as in this case, is generally not sufficiently striking, unique, or distinctive as to make an impression on purchasers separate from the wording.  See In re Sadoru Grp., Ltd., 105 USPQ2d 1484, 1487 (TTAB 2012). 

 

Accordingly, registration is refused pursuant to Section 2(e)(1) of the Trademark Act.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.

 

GENERIC ADVISORY

 

In addition to being merely descriptive, the applied-for mark appears to be generic in connection with the identified goods and, therefore, incapable of functioning as a source-identifier for applicant’s goods.  In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987); In re Empire Tech. Dev. LLC, 123 USPQ2d 1544 (TTAB 2017); see TMEP §§1209.01(c) et seq., 1209.02(a).  Under these circumstances, neither an amendment to proceed under Trademark Act Section 2(f) nor an amendment to the Supplemental Register can be recommended.  See TMEP §1209.01(c).

 

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. 

 

Because of the legal technicalities and strict deadlines involved in the USPTO application process, applicant may wish to hire a private attorney specializing in trademark matters to represent applicant in this process and provide legal advice.  Although the undersigned trademark examining attorney is permitted to help an applicant understand the contents of an Office action as well as the application process in general, no USPTO attorney or staff is permitted to give an applicant legal advice or statements about an applicant’s legal rights.  TMEP §§705.02, 709.06. 

 

For attorney referral information, applicant may consult the American Bar Association’s Consumers’ Guide to Legal Help; an online directory of legal professionals, such as FindLaw®; or a local telephone directory.  The USPTO, however, may not assist an applicant in the selection of a private attorney.  37 C.F.R. §2.11.

 

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  

 

 

/Katrina J. Goodwin/

Examining Attorney

Law Office 122

571-272-7605

Katrina.Goodwin@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 July 10, 2019 for

U.S. Trademark Application Serial No. 88255529

 

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. 

 

 

/Katrina J. Goodwin/

Examining Attorney

Law Office 122

571-272-7605

Katrina.Goodwin@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 July 10, 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.”