To: | Latchable, Inc. (whiptrademark@wilmerhale.com) |
Subject: | U.S. Trademark Application Serial No. 88333285 - LATCH - 2210580.129 |
Sent: | January 30, 2020 05:03:11 PM |
Sent As: | ecom119@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88333285
Mark: LATCH
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Correspondence Address: Michael J. Bevilacqua, Esquire WILMER CUTLER PICKERING HALE AND DORR LL
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Applicant: Latchable, Inc.
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Reference/Docket No. 2210580.129
Correspondence Email Address: |
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NONFINAL 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). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: January 30, 2020
In the incoming correspondence of November 25, 2019, the applicant (1) argues against the refusal under Section 2(d), which acceptable and (2) argues against the refusal under Section 2(e)(1), which is not acceptable. All previous argument and evidence is incorporated herein. The applicant is advised as follows:
SECTION 2(e)(1) REFUSAL – MERELY DESCRIPTIVE
Registration was refused because the applied-for mark merely names the goods and describes a feature and characteristic 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. The examiner has considered the applicant’s arguments and has found them to be unpersuasive. The refusal under Section 2(e)(1) is continued and maintained.
The applicant seeks registration for the term “LATCH” for “non-metal locks for use in programmable locking systems.”
A mark is merely descriptive if it describes a quality, characteristic, function, feature, purpose or use of the specified goods. TMEP §1209.01(b); see In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005); In re Gyulay, 820 F.2d 1216, 1217-18, 3 USPQ2d 1009, 1010 (Fed. Cir. 1987).
The determination of whether a mark is merely descriptive is considered in relation to the identified goods, not in the abstract. In re Abcor Dev. Corp., 588 F.2d 811, 814, 200 USPQ 215, 218 (C.C.P.A. 1978); TMEP §1209.01(b); see, e.g., In re Polo Int’l Inc., 51 USPQ2d 1061 (TTAB 1999) (finding DOC in DOC-CONTROL would be understood to refer to the “documents” managed by applicant’s software, not “doctor” as shown in dictionary definition); In re Digital Research Inc., 4 USPQ2d 1242 (TTAB 1987) (finding CONCURRENT PC-DOS merely descriptive of “computer programs recorded on disk” where 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).
The applicant states that “Registration No. 4961853” was “filed and prosecuted without benefit of counsel” and suggests that had “counsel” filed that mark, it would not have been held descriptive as a whole; therefore, the disclaimer in that mark is not relevant. The fact that the application was filed “without counsel” is not dispositive as to the descriptiveness of the term. That mark is registered on the Supplemental Register due to the design created from the stylized font with the generic term “LATCH” disclaimed.
The applicant’s argument that the term “LATCH” “clearly…harks back to an earlier time, when gates opened with a latch, or keys turned in the latch...” and “[T]he mark is reminiscent or suggestive of times in which there was no need to secure your home, and your gate was easily unlatched to let in your neighbor or a visiting friend” is not well taken. The term is not in “Old English,” and appears in current dictionaries.
The applicant submitted a definition from the Merriam Webster Dictionary that includes the definition of “LATCH” as “a fastener (as for a door) in which a spring slides a bolt into a hole.” The applicant states that his “non-metal locks for use in programmable locking systems are nothing like …fasteners (as for a door) in which a spring slides a bolt into a hole.” It is noted on the attached excerpts from the applicant’s website that the mechanisms for the goods include “Latchbolt Throws” and “Deadbolt Throws” as the bolting mechanism, or “LATCH.” The offerings in the “M” and “C” series of applicant’s goods may also use a conventional key to “turn the latch.” Rather than hearkening to an earlier time when a “LATCH” was purely mechanical, the term “LATCH” is easily understood when viewed in the context of applicant’s “modern” goods. The purpose of the goods is the same, whether mechanical or electronic, and that is to be used as a lock or “LATCH.”
In this case, the applicant’s mark is merely a descriptive, if not generic, term which does not create a new or unique, incongruous or nondescriptive meaning in relation to the goods or services. Potential users would readily understand that the purpose of the goods is to lock or “LATCH” something. The term merely names the purpose of the goods. Accordingly, the refusal to registration on the Principal Register under Section 2(e)(1) is maintained and continued.
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
The applicant must provide the following:
REQUEST FOR INFORMATION
Factual information about the goods must clearly indicate how they operate, their salient features, and their prospective customers and channels of trade. Conclusory statements regarding the goods will not satisfy this requirement.
The applicant must provide information regarding any patent applications, issued patents and provisional patents the applicant may have in regard to the goods.
Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814. Merely stating that information about the goods is available on applicant’s website is an insufficient response and will not make the relevant information of record. See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).
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.
/Paula Mahoney/
Trademark Examining Attorney
Law Office 119
571-272-9191
paula.mahoneyuspto.gov
RESPONSE GUIDANCE