Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

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:  November 05, 2019

 

INTRODUCTION

 

This Office action is supplemental to and supersedes the previous Office action issued on May 6, 2019 in connection with this application.  Based on information in applicant’s response, the examining attorney now issues the following new refusal:  Section 2(f) claim in part insufficient.  See TMEP §§706, 711.02. 

 

In a previous Office action dated May 6, 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.  In addition, applicant was required to satisfy the following requirement:  amend the identification of goods.  Further, the examining attorney issued a Section 2(f) in part advisory, which was inappropriate for the application at hand.  The examining attorney apologizes for any inconvenience caused by inadvertently issuing the inappropriate advisory. 

 

Based on applicant’s response, the trademark examining attorney notes that the following requirement has been satisfied:  amend the identification of goods.  See TMEP §713.02. 

 

Therefore, registration is refused as follows.

 

SUMMARY OF ISSUES

 

            -  Section 2(e)(1) Refusal – Merely Descriptive

            -  Section 2(f) Partial Claim of Acquired Distinctiveness Insufficient

           

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

 

Applicant’s applied-for mark is “LAR-22” for “Firearms, namely, rifles and spare and replacements component parts for rifles” in International Class 13.

 

Registration is refused because the applied-for mark merely describes a 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.

 

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods.  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, 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). 

 

Generally, if the individual components of a mark retain their descriptive meaning in relation to the goods, 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., In re Petroglyph Games, Inc., 91 USPQ2d 1332, 1341 (TTAB 2009) (holding BATTLECAM merely descriptive of computer game software with a feature that involve battles and provides the player with the option to utilize various views of the battlefield); In re Cox Enters., 82 USPQ2d 1040, 1043 (TTAB 2007) (holding THEATL merely descriptive of publications featuring news and information about Atlanta where THEATL was the equivalent of the nickname THE ATL for the city of Atlanta); In re Tower Tech, Inc., 64 USPQ2d 1314, 1317-18 (TTAB 2002) (holding SMARTTOWER merely descriptive of highly automated cooling towers); In re Sun Microsystems, Inc., 59 USPQ2d 1084, 1085 (TTAB 2001) (holding AGENTBEANS merely descriptive of computer software for use in developing and deploying application programs on a global computer network).

 

Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the goods 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).

 

The evidence attached to the May 6, 2019 Office action from Acronym Finder (www.acronymfinder.com) shows that “LAR”, in the context of guns, is a common acronym for a “light automatic rifle” or a “light assault rifle,” while the evidence attached from the applicant’s website (www.rockriverarms.com) shows that the applicant’s LAR-22 rifle is a 22 caliber rifle.  Further, the evidence attached from the websites of Gun Carrier (http://guncarrier.com), Long Range Rimfire (www.precision22lr.com), Outdoor Life (www.outdoorlife.com), and Wikipedia (http://en.wikipedia.org), shows that a “22” rifle is a common type of rifle, which refers to a rifle having a bore diameter of 0.22 inches.  See the evidence attached to the May 6, 2019 Office action.

 

In this case, the individual components of applicant’s mark, “LAR” and “22”, and the composite result of the individual components are descriptive of applicant’s goods and do not create a unique, incongruous, or nondescriptive meaning in relation to the goods.  Specifically, “LAR-22” immediately informs consumers that applicant’s goods are light automatic rifles or light assault rifles which have a bore diameter of 0.22 inches.

 

Accordingly, registration is refused on the Principal Register under Section 2(e)(1) of the Trademark Act. 

 

SECTION 2(F) PARTIAL CLAIM OF ACQUIRED DISTINCTIVENESS INSUFFICIENT

 

Applicant claims acquired distinctiveness under Trademark Act Section 2(f) for a portion of the wording in its mark, namely “LAR”.  See 15 U.S.C. §1052(f); TMEP §1212.02(f).  However, as the mark “LAR-9M” is unitary, a Section 2(f) claim in part is inappropriate.

 

Generally, the element that is the subject of the Section 2(f) claim must present a separate and distinct commercial impression apart from the other elements of the mark; it must be a separable element.  TMEP §1212.02(f)(ii). 

 

In this case, the applicant is using both the wording asserted under Section 2(f), “LAR”, and the additional descriptive wording “22” together as a whole.  Specifically, the Section 2(f) wording and the descriptive wording do not each appear as separate or separable elements of the mark, as the mark is made unitary by the hyphen in “LAR-22”.  See TMEP §§1212.02(f)(ii) et seq.

 

Therefore, the applicant’s partial Section 2(f) claim is inappropriate insufficient to show acquired distinctiveness of the wording “LAR” and is not accepted.

 

COMMUNICATIONS WITH THE TRADEMARK OFFICE

 

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 requirement 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. 

 

RESPONSE GUIDELINES

 

For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

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  

 

 

/Anna C. Burdecki/

Anna C. Burdecki

Examining Attorney

Law Office 108

(571) 270-1941

anna.burdecki@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 05, 2019 for

U.S. Trademark Application Serial No. 88303245

 

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. 

 

 

/Anna C. Burdecki/

Anna C. Burdecki

Examining Attorney

Law Office 108

(571) 270-1941

anna.burdecki@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 05, 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.”