Offc Action Outgoing

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 06, 2019

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on October 3, 2019.

 

In a previous Office action dated May 15, 2019, the trademark examining attorney refused registration of the applied-for mark because the applied-for mark failed to function as a trademark or servicemark. 

 

In addition applicant was required to submit a disclaimer, revise the identification of goods and services and to comply with the requirements for multiple-class applications.

 

The trademark examining attorney maintains and now makes FINAL the refusal(s) and/or requirement(s) in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUES:

 

• Trademark Act Sections 1, 2, 3 and 45 Refusal – Applied-For Mark is Merely a Political Message
• Disclaimer Required
• Identification of Goods and Services
• Multiple-Class Application Requirements

 

TRADEMARK ACT SECTIONS 1, 2, 3 AND 45 REFUSAL – APPLIED-FOR MARK IS MERELY A POLITICAL MESSAGE

 

Registration is refused because the applied-for mark is a slogan or term that does not function as a trademark or service mark to indicate the source of applicant’s goods and services and to identify and distinguish them from others.  Trademark Act Sections 1, 2, 3, and 45, 15 U.S.C. §§1051-1053, 1127.  In this case, the applied-for mark is a political message that merely conveys support of, admiration for, or affiliation with the ideals conveyed by the message.  See In re Hulting, 107 USPQ2d 1175, 1177-79 (TTAB 2013) (holding NO MORE RINOS!, a slogan meaning “No More Republicans In Name Only,” not registrable for a variety of paper items, shirts, and novelty buttons because the mark would be perceived merely as a commonly used political message); In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229-31 (TTAB 2010) (holding ONCE A MARINE, ALWAYS A MARINE not registrable for clothing items because the mark would be perceived merely as an old and familiar military expression); TMEP §1202.04(b). 

 

Terms and phrases that merely convey an informational message are not registrable.  See In re Eagle Crest, Inc., 96 USPQ2d at 1229.  Determining whether a term or phrase 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 phrase] 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 at 1177 (quoting In re Eagle Crest, Inc., 96 USPQ2d at 1229); TMEP §1202.04(b).

 

The previously attached dictionary evidence shows that “CONSERVATIVE” is defined as “an adherent or advocate of political conservatism” while the word “PROUD” is defined as “feeling deep pleasure or satisfaction as a result of one's own achievements, qualities, or possessions or those of someone with whom one is closely associated.”  In combination, the words “CONSERVATIVE” and “PROUD” identify one who is expressing pleasure and satisfaction through their admiration and affiliation with a conservative political movement.

 

This conclusion is supported by the previously attached evidence from applicant’s webpage which shows that applicant is using the applied-for mark to express affiliation with the conservative political movement.  For instance, applicant’s webpage states:

 

“We are #ConservativeProud.  This movement is for all of us who have had enough and want to stand up, be bold and proud conservatives, and who believe in basic American principles of limited government, our Constitutional liberties, free markets, free people, and Opportunity for All.   If we conservatives do not find a way to unite and stand up to the regressive mob, we will soon become a permanent minority in America.  And, the free country we love will be lost forever.

 

We invite conservatives, libertarians, constitutionalists, classic liberals and free thinking people everywhere who support our values to join us. Everyone, regardless of race, ethnicity, religion, gender or lifestyle is encouraged to be a part of this movement”

 

The previously attached evidence from applicant’s webpage shows that this phrase is being used as an expression of political affiliation or support. 

 

The previously attached evidence from the Republican National Committee, the GOP Store, Kevin Brooks for Cleveland City Mayor, and The Whitworthian shows others using variations of this wording to express their political affiliation.  Please see the additional evidence showing this wording used as a political message on clothing.

 

Thus consumers are accustomed to seeing variations of this message used in ordinary language by many different sources, they would not perceive it as a mark that identifies the source of applicant’s goods and/or services but rather only as conveying an informational message about political alignment.

 

Applicant argues that the mark functions when attached to clothing goods because “the sale of clothing is not a political message.”  This argument is unpersuasive.  As shown by the attached evidence, the words “CONSERVATIVE PROUD” and the reverse words “PROUD CONSERVATIVE” are widely used as a political message on clothing items.  Moreover, applicant’s webpage shows that applicant’s goods and services appear to be related to promoting this political message.  Thus consumers would not believe the applied-for mark functions as a source identifier when attached to such goods.

 

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).

 

DISCLAIMER REQUIRED

 

Applicant must disclaim the wording “CONSERVATIVE” because it merely describes applicant’s goods and/or services, and thus is an unregistrable component of the mark. See 15 U.S.C. §§1052(e)(1), 1056(a); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); TMEP §§1213, 1213.03(a). A “disclaimer” is a statement in the application record that an applicant does not claim exclusive rights to an unregistrable component of the mark.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965); TMEP §1213.  A disclaimer does not physically remove the disclaimed matter from the mark or otherwise affect the appearance of the mark.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d at 979, 144 USPQ2d at 433; TMEP §1213.

 

The attached evidence shows that the word “CONSERVATIVE” identifies a particular political movement.  This word therefore describes the field of applicant’s political information services and must be disclaimed.  Applicant may limit the disclaimer to the appropriate services if desired.

 

Applicant should submit a disclaimer in the following standardized format:

 

No claim is made to the exclusive right to use “CONSERVATIVE” apart from the mark as shown in connection with the services “Providing a website featuring information about political issues; Providing an internet website featuring news and information in the field of national and international politics”.

 

If applicant does not provide the required disclaimer, the USPTO may refuse to register the entire mark. See In re Stereotaxis Inc., 429 F.3d 1039, 1040-41, 77 USPQ2d 1087, 1088-89 (Fed. Cir. 2005); TMEP §1213.01(b).  For an overview of disclaimers and instructions on how to satisfy this disclaimer requirement online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/disclaimer.jsp.

 

IDENTIFICATION OF GOODS AND SERVICES

 

The identification of goods and services contains goods and services which are misclassified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must address issues with the following wording:

 

·         The wording “T-shirts, sweatshirts, hats, caps, shorts, boxer shorts, shirts, and jackets” in class 35 of the application identifies goods in class 25, not class 35.  In addition the wording “caps” is vague.  Applicant may adopt “T-shirts, sweatshirts, hats, baseball caps, shorts, boxer shorts, shirts, and jackets” in class 25, if accurate.

 

Applicant may adopt the following identification, if accurate: 

 

Class 25: T-shirts, sweatshirts, hats, baseball caps, shorts, boxer shorts, shirts, and jackets

 

Class 35: Providing a website featuring information about political issues; Providing an internet website featuring news and information in the field of national and international politics

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e).

 

  For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

The application identifies goods and/or services that are classified in at least two classes; however, applicant submitted a fee sufficient for only one class.  In a multiple-class application, a fee for each class is required.  37 C.F.R. §2.86(a)(2), (b)(2); TMEP §§810.01, 1403.01.

 

Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.

 

The fee for adding classes to a TEAS Plus application is $225 per class.  See 37 C.F.R. §§2.6(a)(1)(iv), 2.22(a)(10); TMEP §§819.03, 819.04.  See more information regarding the requirements for maintaining the lower TEAS Plus fee and, if these requirements are not satisfied, for adding classes at a higher fee by regular TEAS.

 

The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class.  See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a); TMEP §820.03.  See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee by regular TEAS.

 

In a multiple-class application based on use in commerce, a specimen is required for each class specified in the identification of goods and/or services.  37 C.F.R. §2.86(a)(3); TMEP §§904.01(b), 1403.01.  Therefore, if applicant amends the application to add international classes, applicant must submit a specimen showing use of the mark for each added class.  In addition, applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “The specimen was in use in commerce at least as early as the filing date of the application.”  37 C.F.R. §2.59(a); TMEP §904.05; see 37 C.F.R. §2.193(e)(1).

 

If the additional specimen is identical to the specimen submitted with the application, and the application was properly verified, the verified statement is not necessary.  Further, if a single specimen supports multiple classes, applicant should indicate which classes the specimen supports rather than providing multiple copies of the same specimen.  TMEP §§904.01(b), 1403.01; see 37 C.F.R. §2.59(a).

 

RESPONSE GUIDELINES

 

How to respond.  Click to file a response to this final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB). 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 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.  

 

 

/David A. Brookshire/

Examining Attorney

Law Office 114

(571) 272-7991

David.Brookshire@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 06, 2019 for

U.S. Trademark Application Serial No. 88318219

 

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. 

 

 

/David A. Brookshire/

Examining Attorney

Law Office 114

(571) 272-7991

David.Brookshire@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 06, 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.”