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:  November 22, 2019

INTRODUCTION

This Office action is in response to applicant’s communication filed on October 21^st, 2019.

In a previous Office action dated April 19^th, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following:  Trademark Act Section 2(e)(1) for being merely descriptive of applicant’s goods, and Trademark Act Section 44(e) because the applicant was not the owner of the foreign registration on the filing date of the U.S. application. In addition, applicant was required to satisfy the following requirements:  amend the identification of goods and provide a certificate of renewal of the foreign registration.

Based on applicant’s response, the trademark examining attorney notes that the following requirements have been satisfied: applicant provided a definite amended identification and certificate of renewal of the foreign registration. See TMEP §§713.02, 714.04. 

The following refusals has also been obviated:  applicant provided sufficient documentation in response to the Section 44(e) refusal. See TMEP §§713.02, 714.04. 

Further, the trademark examining attorney maintains and now makes FINAL the refusal based on Trademark Act Section 2(e)(1) for being merely descriptive. See 37 C.F.R. §2.63(b); TMEP §714.04.

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

Registration is refused because the applied-for mark merely describes a feature 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 determination of whether a mark is merely descriptive is made in relation to an applicant’s goods and/or services, 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). 

“Whether consumers could guess what the product [or service] is from consideration of the mark alone is not the test.”  In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).

Two major reasons for not protecting descriptive marks are (1) to prevent the owner of a descriptive mark from inhibiting competition in the marketplace and (2) to avoid the possibility of costly infringement suits brought by the trademark or service mark owner.  In re Abcor Dev. Corp., 588 F.2d 811, 813, 200 USPQ 215, 217 (C.C.P.A. 1978); TMEP §1209.  Businesses and competitors should be free to use descriptive language when describing their own goods and/or services to the public in advertising and marketing materials.  See In re Styleclick.com Inc., 58 USPQ2d 1523, 1527 (TTAB 2001).

In this case, the applied-for mark is “TWIN SPARK” for “Land vehicles, namely, automobiles, off-road all terrain motor vehicles, vehicle engine hoods; automobile engines” in Class 12. As demonstrated by the attached evidence from the American Heritage Dictionary of the English Language and www.wikipedia.com, “TWIN” means “being two or one of two identical or similar people, animals, or things”, “SPARK” means “a short pulse or flow of electric current”, and a “SPARK PLUG” is a “device for delivering electric current from an ignition system to the combustion chamber of a spark-ignition engine to ignite the compressed fuel/air mixture by an electric spark, while containing combustion pressure within the engine.”

The evidence attached to the Office action dated April 19^th, 2019 and incorporated herein by reference, and the additional attached evidence consisting of screenshots from the websites listed below, establishes that the wording “TWIN SPARK” is commonly used in applicant’s industry to describe a type of engine similar to applicant’s “automobile engines” and featured in applicant’s “land vehicles.”

•  www.auto.ndtv.com
•  www.rideapart.com
• www.iopscience.iop.org
•  www.motorcyclenews.com
•  www.sae.org
•  www.kfz-tech.de
•  www.automobiletechinfo.blogspot.com
•  www.restogusto.com
•  www.motopinas.com
•  www.lexisnexis.com (news articles titled “2020 Honda CRF250L, CFR250 Rally Details Revealed”, “TVS, Bajaj end 10-year tiff over engine parts”, and “All The Bikes You Can Buy Under INR 2 Lakh This Festive Season”)

More specifically, this evidence establishes that the term “TWIN SPARK” is a term of art in the automotive industry and is used to reference “a system for spark-ignition engines, whereby critical ignition components, such as spark plugs and magnetos, are duplicated.” This wording is commonly used in the comparison of different engine types. For example, “as compared with the single spark fired engines, in twin spark engines the combustion of the air-fuel mixture takes place at optimal level and it produces more power,” and “for smaller displacement engines, the use of a twin spark design is less effective, as the area that the combustion is taking place in is much smaller.” As such, the mark is merely descriptive of a feature of applicant’s goods because the wording conveys to consumers that applicant’s “automobile engines” are dual ignition engines with duplicated devices for delivering electric currents from an ignition system to the combustion chamber of a spark-ignition engine, which applicant’s “land vehicles” feature.

In the Response dated October 21^st, 2019, applicant argues that its mark “TWIN SPARK” is a “unique composite” and that “the components of the Applicant’s mark, “TWIN” and “SPARK” are broad, general terms that would be perceived by consumers to mean a multitude of things and do not immediately convey Applicant’s goods.” The examining attorney is not persuaded by this argument. Generally, if the individual components of a mark retain their descriptive meaning in relation to the goods and/or services, the combination results in a composite mark that is itself descriptive and not registrable.  In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1516 (TTAB 2016) (citing In re Tower Tech, Inc., 64 USPQ2d 1314, 1317-18 (TTAB (2002)); TMEP §1209.03(d); see, e.g., Apollo Med. Extrusion Techs., Inc. v. Med. Extrusion Techs., Inc., 123 USPQ2d 1844, 1851 (TTAB 2017) (holding MEDICAL EXTRUSION TECHNOLOGIES merely descriptive of medical extrusion goods produced by employing medical extrusion technologies); In re Cannon Safe, Inc., 116 USPQ2d 1348, 1351 (TTAB 2015) (holding SMART SERIES merely descriptive of metal gun safes); In re King Koil Licensing Co., 79 USPQ2d 1048, 1052 (TTAB 2006) (holding THE BREATHABLE MATTRESS merely descriptive of beds, mattresses, box springs, and pillows). 

Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the goods and/or services is the combined mark registrable.  See In re Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968); In re Positec Grp. Ltd., 108 USPQ2d 1161, 1162-63 (TTAB 2013).

In this case, both the individual components and the composite result are descriptive of applicant’s goods and do not create a unique, incongruous, or nondescriptive meaning in relation to the goods and/or services.  Specifically, the words “TWIN” and “SPARK” are individually descriptive of applicant’s goods, and as demonstrated by the evidence attached to this action and the Office action dated April 19^th, 2019, the composite result “TWIN SPARK” does not create a unique, nondescriptive meaning in relation to the goods; rather, the wording is commonly used together in the automotive industry to describe goods similar to applicant’s.

In the Response dated October 21^st, 2019, applicant references other cases “in which marks were found to be suggestive rather than descriptive” and argues that “similarly, the mark “TWIN SPARK” does not directly convey a real and unequivocal idea of any characteristic, function, quality or ingredient of Applicant’s goods.” The examining attorney is not persuaded by this argument. As explained above, the words “TWIN” and “SPARK” are descriptive of applicant’s goods both individually and when combined. The attached evidence demonstrates that the words “TWIN SPARK” are commonly used together in applicant’s industry to refer to a type of engine. As such, the mark “TWIN SPARK” does convey a real idea that is descriptive of a feature or characteristic of applicant’s goods. Moreover, prior decisions and actions of other trademark examining attorneys in registering other marks have little evidentiary value and are not binding upon the USPTO or the Trademark Trial and Appeal Board.  TMEP §1207.01(d)(vi); see In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1793 n.10 (TTAB 2017).  Each case is decided on its own facts, and each mark stands on its own merits.  In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d at 1793 n.10 (quoting In re Boulevard Entm’t, 334 F.3d 1336, 1343, 67 USPQ2d 1475, 1480 (Fed. Cir. 2003)).

Applicant also argues in the Response dated October 21^st, 2019, that “its predecessors in interests and related companies, including Fiat Auto SPA and Alfa Romeo, have been using the mark for many years and had historic registrations for the mark, including cancelled registrations.” The examining attorney is not persuaded by this argument. As explained above, prior decisions and actions of other trademark examining attorneys in registering other marks have little evidentiary value and are not binding upon the USPTO or the Trademark Trial and Appeal Board.  TMEP §1207.01(d)(vi); see In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1793 n.10 (TTAB 2017).  Each case is decided on its own facts, and each mark stands on its own merits.  In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d at 1793 n.10 (quoting In re Boulevard Entm’t, 334 F.3d 1336, 1343, 67 USPQ2d 1475, 1480 (Fed. Cir. 2003)).

Moreover, a term that was once arbitrary or suggestive may lose its distinguishing and origin-denoting characteristics through use in a descriptive sense over a period of time, and may come to be regarded by the purchasing public as nothing more than a descriptive designation.  In re Digital Research, Inc., 4 USPQ2d 1242, 1243 (TTAB 1987); In re Int’l Spike, Inc., 190 USPQ 505, 507 (TTAB 1976).

Thus, trademark rights are not static, and eligibility for registration must be determined on the basis of the facts and evidence in the record at the time registration is sought, which includes during examination and any related appeal.  In re Chippendales USA Inc., 622 F.3d 1346, 1354, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010); In re Morton-Norwich Prods., Inc., 671 F.2d 1332, 1344, 213 USPQ 9, 18 (C.C.P.A. 1982); In re Thunderbird Prods. Corp., 406 F.2d 1389, 1391, 160 USPQ 730, 732 (C.C.P.A. 1969).

For the foregoing reasons, 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.

CONCLUSION

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. 

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)

/Jillian Renee Burch/

Trademark Examining Attorney

Law Office 128

571-272-3384

jillian.burch@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 November 22, 2019 for

U.S. Trademark Application Serial No. 88284343

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. 

/Jillian Renee Burch/

Trademark Examining Attorney

Law Office 128

571-272-3384

jillian.burch@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 November 22, 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.”