To: | Brother International Corporation (NYC-Trademark@dwt.com) |
Subject: | U.S. Trademark Application Serial No. 88260885 - PREVIEW - N/A |
Sent: | December 07, 2019 09:56:02 PM |
Sent As: | ecom119@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88260885
Mark: PREVIEW
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Correspondence Address: |
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Applicant: Brother International Corporation
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Reference/Docket No. N/A
Correspondence Email Address: |
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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: December 07, 2019
In the incoming correspondence of September 20, 2019, the applicant seeks registration on the Supplemental Register, which is not acceptable since the mark is not in use. Pending the timely filing of an Amendment to Allege Use, the refusal under Section 2(e)(1) is maintained and continued. All previous argument and evidence is incorporated herein.
Upon further review of the application, it appears clarification is required for the identification. The examiner apologizes for not making this finding earlier and any confusion which may be caused. The applicant is advised as follows:
SECTION 2(e)(1) REFUSAL – MERELY DESCRIPTIVE
Registration was refused because the applied-for mark merely names the goods and describes a feature and characteristic 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.
The applicant seeks amendment to the Supplemental Register, which is premature since the applicant is not using the mark in commerce. Therefore, the refusal under Section 2(e)(1) is maintained and continued.
A mark is merely descriptive if it describes a quality, characteristic, function, feature, purpose or use of the specified goods. TMEP §1209.01(b); see In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005); In re Gyulay, 820 F.2d 1216, 1217-18, 3 USPQ2d 1009, 1010 (Fed. Cir. 1987).
Applicant seeks registration of the mark “PREVIEW” for “computer software for creating, manipulating, editing, converting and transferring digital and graphic images, shapes, designs, and text into embroidery design files to be used in connection with sewing, embroidering, and quilting machines; computer software for converting, exporting, and executing embroidery design files for use in connection with sewing, embroidering, and quilting machines; computer software for controlling sewing, embroidering, and quilting machine operation.”
The term “PREVIEW” refers to the ability to “view or exhibit in advance.” (See previously-attached definition from The American Heritage Dictionary of the English Language.)
The applicant’s identification specifies the software is used for “creating, manipulating, editing, converting and transferring digital and graphic images, shapes, designs, and text into embroidery design files to be used in connection with sewing, embroidering, and quilting machines” and converting and exporting such graphics. As applied to the applicant’s goods, the software allows one to “PREVIEW” or “view or exhibit” various elements when creating, manipulating, editing, converting and transferring digital and graphic images used in embroidery designs.
The determination of whether a mark is merely descriptive is considered in relation to the identified goods, not in the abstract. In re Abcor Dev. Corp., 588 F.2d 811, 814, 200 USPQ 215, 218 (C.C.P.A. 1978); TMEP §1209.01(b); see, e.g., In re Polo Int’l Inc., 51 USPQ2d 1061 (TTAB 1999) (finding DOC in DOC-CONTROL would be understood to refer to the “documents” managed by applicant’s software, not “doctor” as shown in dictionary definition); In re Digital Research Inc., 4 USPQ2d 1242 (TTAB 1987) (finding CONCURRENT PC-DOS merely descriptive of “computer programs recorded on disk” where relevant trade used the denomination “concurrent” as a descriptor of a particular type of operating system). “Whether consumers could guess what the product is from consideration of the mark alone is not the test.” In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
As evidence that the term “PREVIEW” is used descriptively in the marketplace for various editing software, including software used in sewing and embroidery, the examiner refers to the previously-attached interned evidence obtained via the Google search engine. For example, see the excerpts from the Dime Pure Inspiration website which offers various types of “Preview Software” to be used for embroidery projects.
In this case, the applicant’s mark is merely a descriptive term which does not create a new or unique, incongruous or nondescriptive meaning in relation to the goods. Potential users would readily understand that the purpose of the software is to review proposed designs in advance, or “PREVIEW” designs to be used in an embroidery project. There is no design or other matter in the mark to obviate the descriptiveness of the term “PREVIEW” in relation to the applicant’s software. Accordingly, the refusal to registration on the Principal Register under Section 2(e)(1) is maintained and continued.
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.
The applicant’s amendment to the Supplemental Register is premature. Although an amendment to the Supplemental Register would normally be an appropriate response to this refusal, such a response is not appropriate in the present case. The instant application was filed under Trademark Act Section 1(b) and is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use meeting the requirements of 37 C.F.R. §2.76 has been timely filed. 37 C.F.R. §2.47(d); TMEP §§816.02, 1102.03.
If applicant files an acceptable allegation of use and also amends to the Supplemental Register, the application effective filing date will be the date applicant met the minimum filing requirements under 37 C.F.R. §2.76(c) for an amendment to allege use. TMEP §§816.02, 1102.03; see 37 C.F.R. §2.75(b). In addition, the undersigned trademark examining attorney will conduct a new search of the USPTO records for conflicting marks based on the later application filing date. TMEP §§206.01, 1102.03.
(1) Use of the registration symbol ® with the registered mark in connection with the designated goods and/or services, which provides public notice of the registration and potentially deters third parties from using confusingly similar marks.
(2) Inclusion of the registered mark in the USPTO’s database of registered and pending marks, which will (a) make it easier for third parties to find it in trademark search reports, (b) provide public notice of the registration, and thus (c) potentially deter third parties from using confusingly similar marks.
(3) Use of the registration by a USPTO trademark examining attorney as a bar to registering confusingly similar marks in applications filed by third parties.
(4) Use of the registration as a basis to bring suit for trademark infringement in federal court, which, although more costly than state court, means judges with more trademark experience, often faster adjudications, and the opportunity to seek an injunction, actual damages, and attorneys’ fees and costs.
(5) Use of the registration as a filing basis for a trademark application for registration in certain foreign countries, in accordance with international treaties.
See 15 U.S.C. §§1052(d), 1091, 1094; J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition §§19:33, 19:37 (rev. 4th ed. Supp. 2017).
The applicant must also address the following:
IDENTIFICATION
Applicant may adopt the following wording, if accurate:
“Downloadable computer software for creating, manipulating, editing, converting and transferring digital and graphic images, shapes, designs, and text into embroidery design files to be used in connection with sewing, embroidering, and quilting machines; computer software for converting, exporting, and executing embroidery design files for use in connection with sewing, embroidering, and quilting machines; computer software for controlling sewing, embroidering, and quilting machine operation” in Class 9; and/or
“Providing online non-downloadable computer software for creating, manipulating, editing, converting and transferring digital and graphic images, shapes, designs, and text into embroidery design files to be used in connection with sewing, embroidering, and quilting machines; computer software for converting, exporting, and executing embroidery design files for use in connection with sewing, embroidering, and quilting machines; computer software for controlling sewing, embroidering, and quilting machine operation” in Class 42.
Applicant’s goods and services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended. See TMEP §1402.06(a)-(b). The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification. TMEP §§1402.06(b), 1402.07(a)-(b). Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted. TMEP §1402.07(e).
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
CLASSIFICATION
ADDITIONAL CLASSES
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in at least two classes; however, applicant submitted a fee sufficient for only one class. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
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.
/Paula Mahoney/
Trademark Examining Attorney
Law Office 119
571-272-9191
paula.mahoneyuspto.gov
RESPONSE GUIDANCE