United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88257353
Mark: HUNTRESS
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Correspondence Address:
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Applicant: Taylors & Co., Inc.
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Reference/Docket No. 56814-15
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) 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: November 04, 2019
INTRODUCTION
This Office action is in response to applicant’s communication filed on October 2, 2019.
In a previous Office action dated April 2, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(d) for a likelihood of confusion with a registered mark, Trademark Act Section 2(e)(1) for merely describing features of the applicant’s goods.
Based on applicant’s response, the trademark examining attorney notes that the following refusal has been withdrawn: Trademark Act Section 2(d) refusal. See TMEP §§713.02, 714.04.
The trademark examining attorney maintains and now makes FINAL the refusal 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:
SECTION 2(e)(1) REFUSAL – MERE DESCRIPTIVENESS
Applicant has requested registration of the mark “HUNTRESS” in standard characters for “Shotguns and parts thereof” in Class 13.
In the present case, the term “HUNTRESS” immediately communicates to the consumer the intended user of the shotgun products. A “huntress” is a woman who hunts. See definition from Ahdictionary.com, attached previously. Attached is evidence of industry examples referring to female hunters using shotguns using the term “huntress.” See attached examples from Wildfowlmag.com, Wideopenspaces.com, Huntressinheels.com, Syrenusa.com. Accordingly, consumers encountering the mark “HUNTRESS” in connection with shotgun products would immediately understand these products may be used by female hunters.
Applicant argues that because applicant’s marketing material does not specifically target female hunters that the term “HUNTRESS” would not describe a user of applicant’s products. This argument is not, however, persuasive. “A mark may be merely descriptive even if it does not describe the ‘full scope and extent’ of the applicant’s goods or services.” In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004) (citing In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1346, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001)); TMEP §1209.01(b). It is enough if a mark describes only one significant function, attribute, or property. In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); TMEP §1209.01(b); see In re Oppedahl & Larson LLP, 373 F.3d at 1173, 71 USPQ2d at 1371. Although applicant’s marketing material and descriptions of the “HUNTRESS” product does not specifically state that the products are intended for use by women hunters only, it is not necessary to establish that the products are solely being used by female hunters to substantiate a finding that the mark describes the goods overall.
Applicant likewise has included examples of the usage of the term “HUNTRESS” in connection with comic books and toy figurines, goods wholly disconnected from the identified firearm goods. Although the term may refer to a fictional character, such information is irrelevant in light of the applied-for mark in connection with the identified goods as the application in the present case remains descriptive. Descriptiveness is considered in relation to the relevant goods and/or services. DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012). “That a term may have other meanings in different contexts is not controlling.” In re Franklin Cnty. Historical Soc’y, 104 USPQ2d 1085, 1087 (TTAB 2012) (citing In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979)); TMEP §1209.03(e). “It is well settled that so long as any one of the meanings of a term is descriptive, the term may be considered to be merely descriptive.” In re Mueller Sports Med., Inc., 126 USPQ2d 1584, 1590 (TTAB 2018) (quoting In re Chopper Indus., 222 USPQ 258, 259 (TTAB 1984)).
For these reasons, the refusal of registration pursuant to Section 2(e)(1) of the Trademark Act for mere descriptiveness is maintained and made final.
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.
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 final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB)
Kathleen Schwarz
Kathleen H. Schwarz
/Kathleen H. Schwarz/
Examining Attorney
Law Office 123
571-272-2460
kathleen.schwarz@uspto.gov
RESPONSE GUIDANCE