To: | Gimlet Media Inc. (drwtrademarks@wolfgreenfield.com) |
Subject: | U.S. Trademark Application Serial No. 88327533 - MOTHERHOOD SESSIONS - G08892001700 |
Sent: | September 28, 2019 04:57:52 PM |
Sent As: | ecom106@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88327533
Mark: MOTHERHOOD SESSIONS
|
|
Correspondence Address: WOLF, GREENFIELD & SACKS, P.C.
|
|
Applicant: Gimlet Media Inc.
|
|
Reference/Docket No. G08892001700
Correspondence Email Address: |
|
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: September 28, 2019
This Office action is in response to applicant’s communication filed on August 21, 2019.
The amended identification of goods and services is accepted and entered into the record. It is noted, for the record, that the applicant has complied with the multiple class application requirements.
The Trademark Act Section 2(e)(1) refusal is made final.
SECTION 2(e)(1) REFUSAL – MARK IS MERELY DESCRIPTIVE
Registration has been refused because the applied-for mark merely describes a feature of applicant’s goods and services. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq. The refusal under Trademark Act Section 2(e)(1) is now made FINAL for the reasons set forth below. See 15 U.S.C. §1052(e)(1); 37 C.F.R. §2.63(b).
A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods and services. 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)).
“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).
Here, the applicant seeks registration of the proposed mark, MOTHERHOOD SESSIONS, in standard characters, for use with “downloadable audio recordings in the fields of entertainment, news, history, relationships, parenting, and general interest” and “entertainment services, namely, providing podcasts and non-downloadable audio recordings in the field of entertainment, news, history, relationships, parenting, and general interests; entertainment in the nature of ongoing television shows featuring information in the fields of entertainment, news, history, relationships, parenting, and general interest; entertainment services, namely, providing non-downloadable movies via a video-on-demand service; production and distribution of television shows and movies.”
The applicant, in the Office action response, states that the word “session” is a commonly used word from the English language, and suggests multiple meanings, yet falls short of describing Applicant’s goods and services with any degree of particularity. The applicant goes on to quote a number of definitions for “sessions” and argues that “when an average consumer encounters the MOTHERHOOD SESSIONS mark in connection with Applicant’s goods and services, they are left to wonder what the SESSIONS portion of the mark means in the context of those goods and services.”
However, descriptiveness is considered in relation to the relevant goods and services. DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012). “That a term may have other meanings in different contexts is not controlling.” In re Franklin Cnty. Historical Soc’y, 104 USPQ2d 1085, 1087 (TTAB 2012) (citing In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979)); TMEP §1209.03(e). “It is well settled that so long as any one of the meanings of a term is descriptive, the term may be considered to be merely descriptive.” In re Mueller Sports Med., Inc., 126 USPQ2d 1584, 1590 (TTAB 2018) (quoting In re Chopper Indus., 222 USPQ 258, 259 (TTAB 1984)).
As stated in the excerpt from the applicant’s website accompanying the first Office action, the applicant’s goods and services feature recordings and shows in which a psychiatrist “sits down with mothers” and discusses issues pertaining to motherhood. “Motherhood” as a subject matter of the goods and services is further supported by the attached excerpts from the applicant’s website entitled “A Note About Therapy from Dr. Sacks” and the attached excerpt entitled “Introducing Gimlet’s Motherhood Sessions.” Moreover, the applicant itself refers to the conversations between a psychiatrist and moms that are the subject of the applicant’s goods and services as “sessions.” These conversations are also called “sessions” in the attached articles and reviews on the New York Times, Wall Street Journal, iHeartRadio and Podcast Review websites.
Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the goods and/or services 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).
In this case, both the individual components and the composite result are descriptive of applicant’s goods and/or services and do not create a unique, incongruous, or nondescriptive meaning in relation to the goods and/or services. Specifically, as made clear by the evidence of record, the applicant’s goods and services feature excerpts of recordings from sessions in which a psychiatrist and moms discussed motherhood. Accordingly, each word in the proposed mark, “MOTHERHOOD” and “SESSIONS” retains its descriptive significance and the combination of the words does not obviate the descriptive significance of the mark as a whole. Therefore, for the foregoing reasons, the refusal to register is maintained and made final.
Seeking Registration On The Supplemental Register:
If applicant files an acceptable allegation of use and also amends to the Supplemental Register, the application effective filing date will be the date applicant met the minimum filing requirements under 37 C.F.R. §2.76(c) for an amendment to allege use. TMEP §§816.02, 1102.03; see 37 C.F.R. §2.75(b). In addition, the undersigned trademark examining attorney will conduct a new search of the USPTO records for conflicting marks based on the later application filing date. TMEP §§206.01, 1102.03.
(1) Use of the registration symbol ® with the registered mark in connection with the designated goods and/or services, which provides public notice of the registration and potentially deters third parties from using confusingly similar marks.
(2) Inclusion of the registered mark in the USPTO’s database of registered and pending marks, which will (a) make it easier for third parties to find it in trademark search reports, (b) provide public notice of the registration, and thus (c) potentially deter third parties from using confusingly similar marks.
(3) Use of the registration by a USPTO trademark examining attorney as a bar to registering confusingly similar marks in applications filed by third parties.
(4) Use of the registration as a basis to bring suit for trademark infringement in federal court, which, although more costly than state court, means judges with more trademark experience, often faster adjudications, and the opportunity to seek an injunction, actual damages, and attorneys’ fees and costs.
(5) Use of the registration as a filing basis for a trademark application for registration in certain foreign countries, in accordance with international treaties.
See 15 U.S.C. §§1052(d), 1091, 1094; J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition §§19:33, 19:37 (rev. 4th ed. Supp. 2017).
FINAL REFUSAL RESPONSE GUIDELINES
This is a final refusal. Please use the links below to respond to the instant Office action and/or file an appeal to the Trademark Trial and Appeal Board.
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 final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB).
/Martha L. Fromm/
Trademark Examining Attorney
United States Patent & Trademark Office
Law Office 106
571-272-9320
Martha.Fromm@USPTO.gov
RESPONSE GUIDANCE