United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88313218
Mark: ADVOCATE
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Correspondence Address: |
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Applicant: Advocate, L.L.C.
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Reference/Docket No. N/A
Correspondence Email Address: |
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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: January 06, 2020
This Office action is in response to applicant’s communication filed on November 21, 2019.
In a previous Office action dated May 4, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(e)(1) descriptiveness. In addition, applicant was required to satisfy the following requirement: amend the identification of goods and/or services. Based on applicant’s response, the trademark examining attorney notes that the following requirement has been satisfied: definite amended identification provided. See TMEP §§713.02, 714.04.
The trademark examining attorney maintains and now makes FINAL the refusal. See 37 C.F.R. §2.63(b); TMEP §714.04.
SUMMARY OF ISSUES MADE FINAL that applicant must address:
SECTION 2(e)(1) REFUSAL MADE FINAL
Registration was 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. Applicant’s arguments have been considered and found unpersuasive.
The proposed mark is ADVOCATE for “Construction management, namely, serving as owner's representative for construction projects; construction services consulting.” A mark is merely descriptive if “it immediately conveys information concerning a feature, quality, or characteristic of [an applicant’s] goods or services.” In re N.C. Lottery, 866 F.3d 1363, 1367, 123 USPQ2d 1707, 1709 (Fed. Cir. 2017) (citing 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)).
An advocate is “One that argues for a cause; a supporter or defender; One that pleads in another's behalf; an intercessor.” See attached definition from http://www.ahdictionary.com/word/search.html?q=advocate. The applicant argues or intercedes for their clients, i.e. acts as an advocate. Consumers often encounter the term ADVOCATE with regard to construction representatives and owner’s representatives, as displayed on the following attached web pages:
[Construction representatives] are also advocates for their customers/property owners
Provides an advocate exclusive to the Owner by placing a construction manager and expert on-site during all phases of construction
http://www.cascocc.com/?page_id=405
You want an Experienced Construction Advocate…
http://www.stoneaspen.com/residential-construction-consulting
As the client advocate, PDC Solutions listens to you, then develops and executes a project plan that allows you to focus on your core business.
http://www.pdcatl.com/services
Trailhead Construction Consulting serves as your advocate
http://trailheadconstructionconsulting.com/
Construction advocate outlines ways you can protect yourself in a contract
Construction Advocate is a consumer advocate whose specialty is in contractor and construction challenges.
http://constructionadvocatenow.com/
New Service: Owner’s Construction Advocate for Renovation Projects
Your Construction Advocate
As your construction advocate, we will work tirelessly to ensure you enjoy a positive building experience.
http://www.colomboconstruction.com/v1/negotiated-general-conduct.aspx
http://www.gsainspection.com/blog/services/advocate-services/
The Owner’s Rep serves as the client’s advocate throughout the project
http://www.cglcompanies.com/blog/hiring-an-owners-rep-what-you-need-to-know/
As an owner’s representative, Marx|Okubo acts as the owner’s advocate to ensure that projects are completed on schedule and budget
http://www.marxokubo.com/owners-representation
As your advocate, we work tirelessly in this role to ensure our clients receive outstanding service and a high-quality product
http://fsb-ae.com/service/owners-representative/
By hiring an owner’s representative the CEO and his organization came to the project table with a level of comfort knowing he had a true advocate in their corner.
http://watchdogpm.com/blog/watchdog-for-owners-representative-and-project-management/
DAY CPM serves as an independent advocate for the owner.
http://www.daycpm.com/owners-representative
As an owner’s representative, Capital Performance Management serves as a transparent extension of your staff and functions as your advocate.
http://www.cpmworks.com/health-care/owners-representative/
Additionally, see attached third party registrations in which the term ADVOCATE was disclaimed as descriptive for representative services. Third-party registrations featuring goods and/or services the same as or similar to applicant’s goods and/or services are probative evidence on the issue of descriptiveness where the relevant word or term is disclaimed, registered under Trademark Act Section 2(f) based on acquired distinctiveness, or registered on the Supplemental Register. E.g., In re Morinaga Nyugyo Kabushiki Kaisha, 120 USPQ2d 1738, 1745 (TTAB 2016) (quoting Inst. Nat’l des Appellations D’Origine v. Vintners Int’l Co., 958 F.2d 1574, 1581-82, 22 USPQ2d 1190, 1196 (Fed. Cir. 1992)); In re Box Solutions Corp., 79 USPQ2d 1953, 1955 (TTAB 2006).
According to the applicant’s website at http://www.advocate-rca.com/,
WE ARE THE OWNER'S ADVOCATE
At ADVOCATE, we specialize in representing homeowners to ensure their interests are directly aligned with a team of experienced building professionals.
All contractors and service providers commit to the following:
Duty of loyalty to the Owner
Duty of candor and integrity to the Owner
Duty to optimize value for the Owner
Duty of transparency to the Owner in project management and execution
Duty to disclose to the Owner all conflicts of interest with proposed and contracted
project participants
Duty to cooperate with project participants to further the Owner’s interests
Serve as an objective, experienced ADVOCATE to advance the Owner's best interests.
The applicant is the owner’s representative or advocate with regard to the construction services. Thus, the wording merely describes a significant feature of applicant’s services.
The applicant asserts that there are third party registrations where ADVOCATE was not found to be descriptive. The fact that third-party registrations exist for marks allegedly similar to applicant’s mark is not conclusive on the issue of descriptiveness. See In re Scholastic Testing Serv., Inc., 196 USPQ 517, 519 (TTAB 1977); TMEP §1209.03(a). An applied-for mark that is merely descriptive does not become registrable simply because other seemingly similar marks appear on the register. In re Scholastic Testing Serv., Inc., 196 USPQ at 519; TMEP §1209.03(a).
It is well settled that each case must be decided on its own facts and the Trademark Trial and Appeal Board is not bound by prior decisions involving different records. See In re Nett Designs, Inc., 236 F. 3d 1339, 1342, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001); In re Datapipe, Inc., 111 USPQ2d 1330, 1336 (TTAB 2014); TMEP §1209.03(a). The question of whether a mark is merely descriptive is determined based on the evidence of record at the time each registration is sought. In re theDot Commc’ns Network LLC, 101 USPQ2d 1062, 1064 (TTAB 2011); TMEP §1209.03(a); see In re Nett Designs, Inc., 236 F.3d at 1342, 57 USPQ2d at 1566.
The applicant also argues the proposed mark “does not immediately inform one of construction advisory services”, and that the application provides a wide swath of services.” 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).[Reserved]
In light of the foregoing, the refusal is made final.
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 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).
/Tracy Cross/
Examining Attorney
Law Office 109
(571) 272-9271
Tracy.Cross@uspto.gov
RESPONSE GUIDANCE
