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. 88318008
MARK: NSGA NATIONAL SPORTING GOODS
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: National Sporting Goods Association
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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PRIORITY ACTION
TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
ISSUE/MAILING DATE: 5/28/2019
DATABASE SEARCH: The trademark examining attorney has searched the USPTO’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
ISSUES APPLICANT MUST ADDRESS: On May 20, 2019, the trademark examining attorney and Melissa Vallone discussed the issues below. Applicant must timely respond to these issues. See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §§708, 711.
Summary of Issues
In this case, applicant must disclaim the wording “NATIONAL SPORTING GOODS ASSOCIATION” and “ALL-STAR VERIFIED DEALER” because it is not inherently distinctive. These unregistrable terms are at best merely descriptive of a characteristic, feature, or purpose of applicant’s services. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
First, the term "National" has been held to be merely descriptive of services that are nationwide or international in scope. See In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217 (Fed. Cir. 2012) (NATIONAL CHAMBER merely descriptive of nationwide online directory services featuring information regarding local and state chambers of commerce and business and regulatory data analysis services for nationally promoting the interests of businesspersons or industry); Nat’l Fid. Life Ins. v. Nat’l Ins. Trust, 199 USPQ 691 (TTAB 1978) (NATIONAL INSURANCE TRUST merely descriptive of services of handling administrative matters in locating suitable insurance coverage for attorneys); Jefferson Bankshares Inc. v. Jefferson Sav. Bank, 14 USPQ2d 1443, 1447 (W.D. Va. 1989) (NATIONAL BANK merely descriptive of banking services); Nat’l Auto. Club v. Nat’l Auto Club, Inc., 365 F. Supp. 879, 180 USPQ 777 (S.D.N.Y. 1973) , aff’d, 502 F.2d 1162 (2d Cir. 1974) (NATIONAL merely descriptive of auto club services). For example, the attached evidence from the National Association of Realtors and the National Association of Elementary School Principals shows two organizations using the term “National” to refer to the geographic scope of its services as “America’s largest trade association” and “throughout the United States,” respectively.
The attached evidence from Dick’s Sporting Goods and Modell’s Sporting Goods shows the wording “Sporting Goods” is commonly used in connection with similar services to refer to a retailer that sells sports and related equipment.
The attached evidence from Merriam-Webster, the American Baseball Coaches Association, and the Sport Marketing Association shows the wording “association” means “an organization of persons having a common interest” and is commonly used in connection with similar services to refer to a group of people or an organization that offers membership, education, conferences, and awards to individuals and entities in a specific common field or with a common interest.
The attached evidence from Merriam-Webster, The Great Game of Business, and Exhibitor Magazine shows the wording “All-Star” means “composed wholly or chiefly of stars or of outstanding performers or participants” and is commonly used in connection with similar services to recognize people and business that have excelled in their field.
The attached evidence from Merriam-Webster, ViperFX, and Marathon Investment Programs shows the wording “Verified” (or “verify) means “to establish the truth, accuracy, or reality of” and is commonly used in connection with similar services to show that the truth and accuracy of a retailer or provider’s statements have been checked and approved by an outside source.
The attached internet evidence form the American Heritage Dictionary of the English Language, Sports Inc., and Maurice Sporting Goods shows the term “dealer” means “One that is engaged in buying and selling” and is commonly used in connection with similar services to refer to a person or entity that is in the business of selling sporting goods.
In sum, the phrase “National Sporting Goods Association” describes various aspects of the applicant’s services, specifically that applicant’s services are nationwide in scope and they are provided by an organization to people who work in the field of sporting goods retail. The phrase “All-Star Verified Dealer” also describes various aspects of the applicant’s services, specifically that applicant recognizes and verifies outstanding sporting goods dealers. Therefore, a disclaimer for the phrases is required for registration.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “NATIONAL SPORTING GOODS ASSOCIATION” and “ALL-STAR VERIFIED DEALER” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
Responding to this Office Action
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.
/Joseph Greene/
Joe Greene
Trademark Examining Attorney
U.S. Patent and Trademark Office, Law Office 125
(571)272-5763
joseph.greene@uspto.gov
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.
