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 27, 2019

 

REVIEW AFTER RESPONSE

In consideration of Applicant’s Response to Office Action (“Response”), dated and filed October 23, 2019, the remarks, evidence, substitute specimen and declaration submitted in support thereof, and the record hereof, the undersigned examining attorney has reexamined the above‑referenced application, in accordance with section 2.63 of the Trademark Rules of Practice, 37 C.F.R. § 2.63 (2019), and has determined the refusal of registration of this application based on the record must be made final.  15 U.S.C. § 1062(b). 

SUMMARY OF ISSUES MADE FINAL

This correspondence details the following bases for refusing advancement of this application:

1.         Refusal to register the proposed mark as merely descriptive of the identified goods is maintained and made final; and

2.         Refusal to register the proposed mark is maintained and made final, as the specimen submissions do not show proper trademark use.

SUBSTANTIVE REFUSALS

REGISTRATION REFUSAL—MERELY DESCRIPTIVE

Applicant filed this application on February 8, 2019, under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a) (2012), based on its use of the mark “WAFFLE” to indicate the source of wheels.  

Registration is finally refusal, pursuant to Section 2(e)(1), because the applied-for mark merely describes a feature of Applicant’s identified goods.  Id. § 1052(e)(1); 37 C.F.R. § 2.63(b); see TMEP §§ 1209.01(b), 1209.03(g). 

Pursuant to Section 2(e)(1), a mark that immediately conveys information about an ingredient, quality, characteristic, function, feature, purpose or use of the relevant goods or services is merely descriptive and therefore refused registration on the Principal Register.  15 U.S.C. § 1052(e)(1); see In re Gyulay, 820 F.2d 1216, 3 U.S.P.Q.2d 1009 (Fed. Cir. 1987); In re Bed & Breakfast Registry, 791 F.2d 157, 229 U.S.P.Q. 818 (Fed. Cir. 1986); In re MetPath Inc., 223 U.S.P.Q. 88 (TTAB 1984); In re Bright‑Crest, Ltd., 204 U.S.P.Q. 591 (TTAB 1979). 

It is settled law that the question of descriptiveness cannot be determined in the abstract, In re Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 U.S.P.Q.2d 1217, 1219 (Fed. Cir. 2012), “but in relation to the goods or services for which registration is sought, the context in which it is being used on or in connection with those goods or services, and the possible significance that the term would have,” In re Zanova, Inc., 59 U.S.P.Q.2d 1300, 1303 (TTAB 2001), “from the viewpoint of the relevant purchasing public.”  In re Stereotaxis, Inc., 429 F.3d 1039, 1042, 77 U.S.P.Q.2d 1087, 1090 (Fed. Cir. 2005); see In re Abcor Dev. Corp., 588 F.2d 811, 814, 200 U.S.P.Q. 215, 218 (C.C.P.A. 1978) (“[I]mplicit in this test is the requirement that descriptiveness of a mark, when applied to the goods or services involved, is to be determined from the standpoint of the average prospective purchaser.”).  “The question is not whether someone presented with only the mark could guess what the goods or services are.  Rather, the question is whether someone who knows what the goods or services are will understand the mark to convey information about them.”  In re Tower Tech, Inc., 64 U.S.P.Q.2d 1314, 1316–17 (TTAB 2002).  In addition, “the mark need not recite each feature of the relevant goods or services in detail to be descriptive.”  In re Dial-a-Mattress Operating Corp., 240 F.3d 1341, 1346, 57 U.S.P.Q.2d 1807 (Fed. Cir. 2001). 

“Any competent source suffices to show the relevant purchasing public’s understanding of a contested term or phrase,” In re Nett Designs, 236 F.3d 1339, 1341, 57 U.S.P.Q.2d 1564 (Fed. Cir. 2001), “such as dictionaries, newspapers, or surveys.”  In re Bed & Breakfast Registry, 791 F.2d 157, 160, 229 U.S.P.Q. 818, 819 (Fed. Cir. 1986).  “Third-party usage can demonstrate the ordinary dictionary meaning of a term or the meaning of a term to those in the trade.”  Specialty Brands, Inc. v. Coffee Bean Distrib., Inc., 223 U.S.P.Q. 1281, 1285 (Fed. Cir. 1984).

“The intent of Section 2(e)(1) is to protect the competitive needs of others, that is, ‘descriptive words must be left free for public use.’ ”  In re Styleclick.com Inc., 57 U.S.P.Q.2d 1445, 1448 (TTAB 2000) (quoting In re Colonial Stores, Inc., 394 F.2d 549, 157 U.S.P.Q. 382, 383 (C.C.P.A. 1968)). 

In the instant case, Applicant’s asserted designation “WAFFLE” is presented in standard characters, standing alone.  The record evidence demonstrates that waffle wheels are used by numerous wheel retailers and manufacturers to describe a style of wheels that “provide multiple row settings with one wheel,” Carolina Agri Power LLC, Unverferth Waffle Wheels,  http://www.carolinaap.com/new-equipment/unverferth/wheel-products/Replacement-Wheels/Waffle-Wheels, TSDR, http://tsdr.uspto.gov/, Office Action, April 23, 2019, p. 34, and “can come with a series of either a 2 bolt hole mounting area or 3 bolt mounting bracket.”    Nebraska Tires, Waffle Wheels for MFD Tractors, http://www.nebraskatire.com/farm-tractor/waffle-wheels-mfd-tractors, id. at 17; see evidence, TSDR, http://tsdr.uspto.gov/, Office Action, April 23, 2019, pp. 2-38.  The record evidence is supplemented with addition evidence to demonstrate the descriptive nature of the proposed mark when used in association with the goods to the relevant public.  See attached evidence.  None of the record evidence references Applicant as the brand or source of the waffle-style wheels. 

In its Response, Applicant notes that the term “WAFFLE” has many meanings.  While this fact is not in dispute, it is irrelevant.  The determination of whether a mark is merely descriptive must be made in relation to the goods or services for which registration is sought.  In re Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 U.S.P.Q.2d 1217, 1219 (Fed. Cir. 2012).

Applicant further makes the unsupported and unsubstantiated assertion that the record evidence shows “WAFFLE wheels that are, in fact, purchased from Applicant.”  Resp.  Applicant states that its evidence shows that it is the OEM referenced in a screenshot from NTS Tire Supply.  However, no reference to Applicant appears on this screenshot, and, based on actual examination of the online webpage, attached hereto, http://store.ntstiresupply.com/shop/product/wt007420-38-d-x-12-w-waffle-wheel-groups-of-3-bolts-12-on-16-732-bc-14-625-ph-22-0-mm-bh-94611, there is no reference to Applicant.

The record evidences demonstrate that “WAFFLE” would be understood to describe a feature of the identified goods.  See record evidence.

Since the proposed mark, when viewed in connection with Applicant’s listed goods, would immediately and forthwith convey to relevant purchasers that the identified goods are a specific type of wheel, the proposed designation is merely descriptive when considered in its entirety.  For this reason, Applicant’s mark is refused registration on the Principal Register.

Said REFUSAL is now maintained and made FINAL.

Applicant should note the following additional ground for refusal.

SPECIMENS DO NOT SUPPORT TRADEMARK USE

Applicant filed this application on February 8, 2019, under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a) (2012), based on its use of the mark “WAFFLE,” to indicate the source of wheels.

Applicant was previously refused registration, in accordance with Sections 1(a) and 45 of the Trademark Act, 15 U.S.C. §§ 1051-1053, 1127, on the basis that the specimen does not show proper trademark use of the mark in commerce.  15 U.S.C. §§ 1051(a), 1127; 37 C.F.R. §§ 2.34(a)(1)(iv), 2.56; TMEP §§ 904, 904.07(a).  Response options for overcoming that refusal, if any, were set forth in the prior Office action.  Applicant, however, responded to such refusal by submitting a substitute specimen that does not show proper use of the applied-for mark in commerce for the reasons immediately stated below.  Thus, the refusal to register the proposed mark is now made final. 

Under Sections 1(a) and 45 of the Trademark Act and Rule 2.56, an application based on use of the mark in commerce must include a specimen showing proper trademark use on the applied-for goods, packaging or displayed at a point of sale.  15 U.S.C. §§ 1051(a), 1127; 37 C.F.R. §§ 2.34(a)(1)(iv), 2.56; TMEP §§ 904, 904.07(a), 1301.04.  Specifically, Section 45 requires use “on the goods or their containers or the displays associated therewith or on tags or labels affixed thereto.”  15 U.S.C. § 1127; see 37 C.F.R. § 2.56(b)(1); TMEP §§ 904.03, 904.04(b)–(c).

“While section 45 specifically provides that use of a mark on advertising qualifies as ‘use in commerce’ for a service mark, it omits use on advertising under the provision for marks used on goods, i.e., trademarks.”  In re U.S. Tsubaki, Inc., 109 U.S.P.Q.2d 2002, 2002 n.3 (TTAB 2014). 

As set forth in section 904.04(b) of the Trademark Manual of Examining Procedure, TMEP § 904.04(b) (October 2018), advertising material will not generally support trademark use for goods.  “This is because any material whose function is simply to tell a prospective purchaser about the goods or to promote the sale of the goods is unacceptable to support trademark use.”  In re MediaShare Corp., 43 U.S.P.Q.2d 1304, 1307 (TTAB 1997).  An exception to this practice is that when the advertising material shows the mark on the actual goods, then the advertising material is acceptable because it allows an examination of the mark as on the goods, in accordance with Section 45. 

In addition, the inclusion of a phone number, Internet address, or mailing address as part of corporate contact information on an advertisement describing a product is not in itself sufficient to meet the criteria for a display associated with the goods.  TMEP § 904.03(h).  There must be an offer to accept orders or instructions on how to place an order.   See In re MediaShare Corp., 43 U.S.P.Q.2d at 1306 (finding the applicant’s fact sheet brochure, which included an address and phone number but omitted any information as to product price and how to order applicant's software, was merely advertising material).

As set forth in section 904.03(i)(C)(3) of the Trademark Manual of Examining Procedure, "Contact Us" buttons and links usually are not acceptable because they generally do not enable direct ordering of the goods. These buttons and links typically route consumers to a different web page that offers only an invitation to obtain more information about the goods, or about the retailers, wholesalers, or distributors who actually sell the goods.  See, e.g., In re Quantum Foods, Inc., 94 U.S.P.Q.2d 1375, 1379 (TTAB 2010) (noting that the "contact us" link on applicant’s web-page specimen did not take customers to an order form, but instead routed to a web page with applicant’s e-mail address and telephone number).

In support of trademark use, Applicant initially submitted a specimen flier that does not show the mark on the actual goods, and the bottom of the flier includes an Internet address and phone number to “contact your Titan dealer today for details,” without appearing to be direct contacts to place orders.  Thus, the specimen flier is not acceptable because it is merely advertising material apparently to promote the sale of Applicant’s goods.  In its Response, Applicant has submitted a screenshot of a webpage advertisement of its waffle wheels.  The webpage includes a “dealer login,” customer service phone number, and “Contact Us” fill-in fields.  The specimen webpage does not provide a sufficient means of ordering specific goods.  The record evidence shows that waffle-style wheels are not specialized industrial products that cannot be ordered directly as online purchases.  For example, AG Wheel Express, NTS Tire Supply, and Wold allow users to make purchases based on entering clear information, such as bolt pattern and wheel size.  See record evidence.

Consequently, the specimen submissions are unacceptable to support trademark use. 

Said REFUSAL is now maintained and made FINAL.

THIS IS A FINAL ACTION.

 

How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

Please contact the undersigned attorney with any questions.

Sincerely,

/Judy Helfman/

Judith M. Helfman

Attorney, Law Office 111

571/272-5892

judy.helfman@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 an 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 an 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 27, 2019 for

U.S. Trademark Application Serial No. 88293886

 

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. 

 

 

/Judy Helfman/

Judith M. Helfman

Attorney, Law Office 111

571/272-5892

judy.helfman@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 27, 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.”