Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

FINAL 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) 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:  October 21, 2019

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on September 28, 2019.

 

In a previous Office action dated April 1, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following:  Trademark Act Section 2(e)(1) for mere descriptiveness, and Trademark Act Sections 1 and 45 for failure to show the applied-for mark in use in commerce with any of the specified goods.  In addition, applicant was required to satisfy the following requirement:  amend the identification of goods.

 

Based on applicant’s response, the trademark examining attorney notes that the identification requirement has been satisfied.  See TMEP §§713.02, 714.04. 

 

In addition, the specimen refusal is withdrawn.  See TMEP §§713.02, 714.04. 

 

However, the trademark examining attorney maintains and now makes FINAL the Section 2(e)(1) refusal below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

 

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

Registration is refused because the applied-for mark merely describes a characteristic or purpose 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 immediately conveys knowledge of a quality, feature, function, or characteristic of [an applicant’s] goods or services.”  In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (quoting In re Bayer Aktiengesellschaft, 488 F.3d 960, 963, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)); TMEP §1209.01(b); see DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (quoting In re Abcor Dev. Corp., 588 F.2d 811, 814, 200 USPQ 215, 218 (C.C.P.A. 1978)).

 

In the present case, applicant’s proposed mark is GRAB BAG for “Cloth bags for storage; Halloween goodie bags made of cloth; cloth Halloween goodie bags; Halloween candy bags in the nature of cloth bags for storing candy.” 

 

The previously attached dictionary evidence from The American Heritage Dictionary of the English Language shows that GRAB BAG means “A container filled with articles, such as party gifts, to be drawn unseen”.  Similar dictionary evidence from Lexico (Oxford Dictionary) and Merriam-Webster Dictionary are presently attached, defining GRAB BAG as “A container from which a person chooses a wrapped item at random, without knowing the contents” and “a receptacle (such as a bag) containing small articles which are to be drawn (as at a party or fair) without being seen,” respectively.  Additionally, the attached evidence from FIRE SMART PROMOTIONS, KMS x CO, PROFESSIONAL PROMOTIONS, TOSS DESIGNS and US CUTTER shows that third parties regularly use the term GRAB BAG to describe bags for holding and distributing candy and/or other treats.

 

Finally, the specimen showing an Amazon product page states “Adults – use the bag to give out candy and surprise the kids!”.

 

Based on this evidence, GRAB BAG merely describes a characteristic or purpose of applicant’s goods, i.e., applicant’s cloth bags and Halloween bags are to be filled with articles, such as party gifts and candy, to be drawn unseen by partygoers and/or trick-or-treaters. 

 

Applicant’s arguments have been considered and found unpersuasive for the reasons set forth below.

 

First, applicant argues that the mark is suggestive because it is not sold already filled with small articles.  This distinction is irrelevant since a function of the bag is, according to applicant, to hold small articles – namely, wrapped candies.  Therefore, the mark is descriptive of a purpose of the bags.

 

Second, applicant argues that persons reaching into the applicant’s bag will see what they are choosing from the bag because the bag is open at the top.  This argument is unconvincing since the person reaching into the bag simply needs to close their eyes for the items in the bag to remain unseen.

 

Third, applicant further argues that the mark is suggestive because the mark has multiple meanings, is a double entendre and requires multi-stage reasoning for consumers to understand the double entendre created by the mark.  Specifically, applicant argues that, in order to understand the secondary meaning of GRAB BAG, “consumer[s] must read the instructions” to discover that a skeleton hand on the bag surprises the person reaching into the bag.  Applicant’s response at 5-6.  Applicant states: “It is only then that the consumer would connect the term grab bag with the skeleton grabbing the person and understand the play on words used.”  Id. At 6.  Thus, applicant undermines its own argument because the fact that the double meaning is not readily apparent indicates that the mark is not a double entendre at all.

 

The multiple meanings that make an expression a “double entendre” must be well-recognized by the public and readily apparent from the mark itself.  See In re Calphalon Corp., 122 USPQ2d 1153, 1163-64 (TTAB 2017) (quoting TMEP §1213.05(c)) (finding SHARPIN not a double entendre in relation to cutlery knife blocks with built-in sharpeners and affirming descriptiveness refusal); In re Brown-Forman Corp., 81 USPQ2d 1284, 1287 (TTAB 2006) (finding GALA ROUGE not a double entendre in relation to wines and affirming disclaimer of ROUGE); In re The Place, Inc., 76 USPQ2d 1467, 1470-71 (TTAB 2005) (finding THE GREATEST BAR not a double entendre in relation to restaurant and bar services and affirming descriptiveness refusal).

 

Fourth, applicant further argues that third parties do not use the term GRAB BAG in connection with similar goods.  However, the attached evidence shows otherwise.  Therefore, this argument is unconvincing.

 

Fifth, applicant references third party registrations including the term GRAB BAG as evidence of the applied-for mark’s suggestiveness.  This argument fails for two reasons: (1) the mere submission of a list of registrations does not make such registrations part of the record, and (2) the registrations are not for similar goods and/or services.  To make third party registrations part of the record, an applicant must submit copies of the registrations, or the complete electronic equivalent from the USPTO’s automated systems, prior to appeal.  In re Star Belly Stitcher, Inc., 107 USPQ2d 2059, 2064 (TTAB 2013); TBMP §1208.02; TMEP §710.03. 

 

Even if considered, the noted registrations are for online retail store services, crackers, and plastic pet waste bags, which are unrelated to cloth goodie and Halloween bags.  The determination of whether a mark is merely descriptive is made in relation to an applicant’s goods, not in the abstract.  DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012); 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, e.g., In re Polo Int’l Inc., 51 USPQ2d 1061, 1062-63 (TTAB 1999) (finding DOC in DOC-CONTROL would refer to the “documents” managed by applicant’s software rather than the term “doctor” shown in a dictionary definition); In re Digital Research Inc., 4 USPQ2d 1242, 1243-44 (TTAB 1987) (finding CONCURRENT PC-DOS and CONCURRENT DOS merely descriptive of “computer programs recorded on disk” where the relevant trade used the denomination “concurrent” as a descriptor of a particular type of operating system). 

 

Finally, applicant argues that any doubt regarding the mark’s descriptiveness should be resolved on applicant’s behalf.  E.g., In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 1571 4 USPQ2d 1141, 1144 (Fed. Cir. 1987); In re Grand Forest Holdings, Inc., 78 USPQ2d 1152, 1156 (TTAB 2006).  However, in the present case, the evidence of record leaves no doubt that the mark is merely descriptive.

 

Applicant’s proposed mark is therefore refused as merely descriptive under Trademark Act Section 2(e)(1).

 

 

RESPONSE GUIDANCE

 

Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond by providing one or both of the following:

 

(1)        A request for reconsideration that fully resolves all outstanding requirements and refusals; and/or

 

(2)        An appeal to the Trademark Trial and Appeal Board with the required filing fees.

 

TMEP §715.01; see 37 C.F.R. §2.63(b)(1)-(2).

 

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)

 

• 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.

 

 

/Andrea B. Cornwell/

Andrea B. Cornwell

Examining Attorney

Law Office 115

571-272-4608

andrea.cornwell@uspto.gov

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on October 21, 2019 for

U.S. Trademark Application Serial No. 88270307

 

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. 

 

 

/Andrea B. Cornwell/

Andrea B. Cornwell

Examining Attorney

Law Office 115

571-272-4608

andrea.cornwell@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 October 21, 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.”