To: | Erik Brunetti (sommer@stussy.com) |
Subject: | U.S. Trademark Application Serial No. 88308434 - FUCK - FUCK, 14 |
Sent: | November 08, 2019 01:55:03 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 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 Attachment - 38 Attachment - 39 Attachment - 40 Attachment - 41 Attachment - 42 Attachment - 43 Attachment - 44 Attachment - 45 Attachment - 46 Attachment - 47 Attachment - 48 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88308434
Mark: FUCK
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Correspondence Address: JOHN R. SOMMER, ATTORNEY-AT-LAW
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Applicant: Erik Brunetti
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Reference/Docket No. FUCK, 14
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). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: November 08, 2019
This letter responds to the applicant's communication filed on July 25, 2019. The applicant’s amended identification of goods is accepted and made of record.
Applied-for mark will not be refused registration based on scandalous/immoral provision of Trademark Act Section 2(a), 15 U.S.C. §1052(a).
On June 13, 2019, applicant was advised of the pending decision by the Supreme Court of the United States in Iancu v. Brunetti, ___ U.S. ___, 2019 USPQ2d 232043 (2019). The issue on appeal was whether the scandalous/immoral provision of the trademark statute violates the First Amendment of the Constitution because it impermissibly restricts free speech, as held by the U.S. Court of Appeals for the Federal Circuit. In re Brunetti, 877 F.3d 1330, 125 USPQ2d 1072 (Fed. Cir. 2017). Because applicant’s mark would have been subject to refusal under the scandalous/immoral provision, applicant was advised that action on this application would be suspended pending the outcome of the appeal to the Supreme Court.
On June 24, 2019, the Supreme Court decided Iancu v. Brunetti, affirming the judgment of the Federal Circuit. Iancu v. Brunetti, ___ U.S. ___, 2019 USPQ2d 232043. Accordingly, the scandalous/immoral provision under Section 2(a) is no longer a valid ground on which to refuse registration. Therefore, registration will not be refused because applicant’s mark consists of or includes matter that is scandalous under Section 2(a). Nevertheless, applicant’s mark is not entitled to registration for the following reasons.
Summary of Issues that Applicant Must Address
Refusal under Sections 1, 2, 3, and 45 – Widely-used Commonplace Wording
Terms and expressions that merely convey an informational message are not registrable. In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229 (TTAB 2010). Determining whether the term or expression functions as a trademark or service mark depends on how it would be perceived by the relevant public. In re Eagle Crest, Inc., 96 USPQ2d at 1229; In re Aerospace Optics, Inc., 78 USPQ2d 1861, 1862 (TTAB 2006); TMEP §1202.04. “The more commonly a [term or expression] is used, the less likely that the public will use it to identify only one source and the less likely that it will be recognized by purchasers as a trademark [or service mark].” In re Hulting, 107 USPQ2d 1175, 1177 (TTAB 2013) (quoting In re Eagle Crest, Inc., 96 USPQ2d at 1229); TMEP §1202.04(b).
The attached evidence from a variety of websites, including Amazon.com and ETSY.com, shows that this term or expression is commonly used to convey the message of disdain. The evidence shows that the phrase is commonly used on clothing and jewelry and other forms of expressions, such as stickers and glassware. Because consumers are accustomed to seeing this term or expression commonly used in everyday speech by many different sources, they would not perceive it as a mark identifying the source of applicant’s goods and/or services but rather as only conveying an informational message.
An applicant may not overcome this refusal by amending the application to seek registration on the Supplemental Register or asserting a claim of acquired distinctiveness under Section 2(f). TMEP §1202.04(d); see In re Eagle Crest, Inc., 96 USPQ2d at 1229. Nor will submitting a substitute specimen overcome this refusal. See TMEP §1202.04(d).
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
/Curtis W. French/
Curtis W. French
Trademark Examining Attorney
Law Office 115
571-272-9472
curtis.french@uspto.gov
RESPONSE GUIDANCE