To: | OIC Toys, LLC (ttraveland@txcorplaw.com) |
Subject: | U.S. Trademark Application Serial No. 88270337 - GRAB BAG - N/A |
Sent: | October 21, 2019 08:06:38 PM |
Sent As: | ecom115@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88270337
Mark: GRAB BAG
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Correspondence Address:
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Applicant: OIC Toys, LLC
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Reference/Docket No. N/A
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: October 21, 2019
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In addition, the specimen refusal is withdrawn.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 “Novelty toy items for playing jokes in the nature of amusement gags or practical jokes; Novelty toy items for playing jokes in the nature of prank toys; Novelty toys for playing jokes; Plastic novelty toy items for playing jokes in the nature of Halloween-themed items, namely, ghosts, skeleton hands, zombie hands, mummy hands, and other scary items that pop out from a cloth bag.”
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 ORIENTAL TRADING, NOVELTIES, RHODE ISLAND NOVELTY, NOBBIES PARTIES, GEDDES, and SMILE NOVELTY shows that third parties regularly use the term GRAB BAG to describe small novelty toys that are placed in bags for distribution. Moreover, 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 the bags used to hold and distribute candy and/or other small articles like toys.
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 novelty toys are incorporated into a bag to be filled with articles, such as party gifts and candy, to be drawn unseen by partygoers and/or trick-or-treaters, and/or applicant’s novelty toys are the articles used to fill the grab bag.
Applicant’s arguments have been considered and found unpersuasive for the reasons set forth below.
First, applicant argues that the mark is suggestive because its novelty toy bag 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. Therefore, the mark is descriptive of a purpose of the prank bags and/or small novelty toys that will fill 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.
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 novelty toys. 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).
Applicant’s proposed mark is therefore refused as merely descriptive under Trademark Act Section 2(e)(1).
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)
/Andrea B. Cornwell/
Andrea B. Cornwell
Examining Attorney
Law Office 115
571-272-4608
andrea.cornwell@uspto.gov