To: | GoPro, Inc. (trademarks@fenwick.com) |
Subject: | U.S. Trademark Application Serial No. 88362888 - BACPAC - N/A |
Sent: | January 07, 2020 04:38:22 PM |
Sent As: | ecom120@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88362888
Mark: BACPAC
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Correspondence Address:
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Applicant: GoPro, Inc.
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Reference/Docket No. N/A
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 07, 2020
This Office action is in response to applicant’s communication filed on December 16, 2019.
In a previous Office action dated June 17, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(e)(1) for mere descriptiveness. In addition, applicant was required to satisfy the following requirement: amend the identification of goods.
Based on applicant’s response, the trademark examining attorney notes that the following requirement has been satisfied: amend the identification of goods. See TMEP §§713.02, 714.04.
Applicant presented arguments regarding the Section 2(e)(1) refusal, but these arguments were found unpersuasive for the reasons described below. Therefore, the Section 2(e)(1) refusal is continued and maintained. Also, the trademark examining attorney has determined that a new information requirement must issue. Therefore, this new non-final Office action has been issued in order to address the new information requirement.
All previous arguments and evidence, where applicable, are incorporated by reference herein.
Summary of Issues
Section 2(e)(1) Refusal - Merely Descriptive
Applicant seeks to register the mark BACPAC for “Accessories for cameras and photographic apparatus and instruments, namely, battery packs, battery chargers, flashes, hoods, shutters, handles, tripods, monopods, straps, filters, mounts and supports, lens adapters, flashlamps, lenses, self-timers, flat panel display screens, microphones” in International Class 9.
“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).
Generally, if the individual components of a mark retain their descriptive meaning in relation to the goods and/or services, the combination results in a composite mark that is itself descriptive and not registrable. In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1516 (TTAB 2016) (citing In re Tower Tech, Inc., 64 USPQ2d 1314, 1317-18 (TTAB (2002)); TMEP §1209.03(d); see, e.g., Apollo Med. Extrusion Techs., Inc. v. Med. Extrusion Techs., Inc., 123 USPQ2d 1844, 1851 (TTAB 2017) (holding MEDICAL EXTRUSION TECHNOLOGIES merely descriptive of medical extrusion goods produced by employing medical extrusion technologies); In re Cannon Safe, Inc., 116 USPQ2d 1348, 1351 (TTAB 2015) (holding SMART SERIES merely descriptive of metal gun safes); In re King Koil Licensing Co., 79 USPQ2d 1048, 1052 (TTAB 2006) (holding THE BREATHABLE MATTRESS merely descriptive of beds, mattresses, box springs, and pillows).
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 do not create a unique, incongruous, or nondescriptive meaning in relation to the goods.
Specifically, the word “backpack” is defined as a “piece of equipment carried on a person's back”, a “sturdy bag designed for carrying articles on a person's back, having shoulder straps and often mounted on a lightweight frame”, and a “piece of equipment, often containing life-support devices, designed to be used while being carried on the back”. See previously attached definitions from lexico.com and ahdictionary.com. Applicant’s goods include “Accessories for cameras and photographic apparatus and instruments, namely, battery packs, battery chargers, flashes, hoods, shutters, handles, tripods, monopods, straps, filters, mounts and supports, lens adapters, flashlamps, lenses, self-timers, flat panel display screens, microphones”. Therefore, the wording BACPAC is merely descriptive of a characteristic, function, or purpose of applicant’s camera accessories (including mounts, supports, straps, etc.), which may include mounts, supports, straps, and other camera accessories for mounting/attaching cameras to bags worn on the back (i.e. backpacks).
Applicant argues that “None of the goods listed in the amended identification comprise goods that come in the form of a 'backpack', or goods that are especially purposed for being affixed to ‘backpacks’”. However, while applicants goods may not be “especially purposed” for affixation to backpacks, goods such as camera mounts, camera supports, camera straps, etc. can nevertheless be used in conjunction with backpacks because they are for use generally in affixing cameras to other items and surfaces, which may include backpacks. In addition, attached evidence from gopro.com shows that applicant’s camera mounts and other products can be (and are often made to be) attached to backpacks (for example, a GoPro “Magnetic Swivel Clip” is advertised on applicant’s website as being able to “Clip your GoPro to your backpack strap…” and shows a picture with the clip attached to a backpack, while another product shows a camera handle/tripod attached to a backpack, and a “Swivel Mount” is pictured attached to a backpack). As discussed in the information requirement described below, applicant must specify if the goods in the identification can be used with and or attached to backpacks.
Further, the mark is spelled BACPAC, but this does not prevent the mark from being merely descriptive. A novel spelling or an intentional misspelling that is the phonetic equivalent of a merely descriptive word or term is also merely descriptive if purchasers would perceive the different spelling as the equivalent of the descriptive word or term. See In re Quik-Print Copy Shop, Inc., 616 F.2d 523, 526 & n.9, 205 USPQ 505, 507 & n.9 (C.C.P.A. 1980) (holding “QUIK-PRINT,” phonetic spelling of “quick-print,” merely descriptive of printing and photocopying services); In re Calphalon Corp., 122 USPQ2d 1153, 1163 (TTAB 2017) (holding “SHARPIN”, phonetic spelling of “sharpen,” merely descriptive of cutlery knife blocks with built-in sharpeners); In re Carlson, 91 USPQ2d 1198, 1203 (TTAB 2009) (holding “URBANHOUZING,” phonetic spelling of “urban” and “housing,” merely descriptive of real estate services); TMEP §1209.03(j). Here, the wording BACPAC is the phonetic equivalent of the word “backpack”, which is merely descriptive of applicant’s goods for the reasons described above.
As the wording BACPAC is merely descriptive of applicant’s goods, the applied-for-mark as a whole is merely descriptive and is not entitled to registration.
Advisory - 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.
To amend an intent-to-use application under Trademark Act Section 1(b) to use in commerce, an applicant must file, prior to approval of the mark for publication, an acceptable amendment to allege use. See 15 U.S.C. §1051(c); 37 C.F.R. §2.76; TMEP §§806.01(b), 1103. An amendment to allege use must satisfy the following requirements:
(1) STATEMENTS: The following statements: “The applicant is the owner of the mark sought to be registered.” and “The applicant is using the mark in commerce on or in connection with all the goods/services in the application or notice of allowance, or as subsequently modified.”
(2) DATES OF FIRST USE: The date of first use of the mark anywhereon or in connection with the goods and/or services, and the date of first use of the mark in commerceas a trademark or service mark. See more information about dates of use.
(3) GOODS AND/OR SERVICES: The goods and/or services specified in the application.
(4) SPECIMEN: A specimen showing how applicant uses the mark in commerce for each class of goods and/or services for which use is being asserted. If a single specimen supports multiple classes, applicant should indicate which classes the specimen supports rather than providing multiple copies of the same specimen. See more information about specimens.
(5) FEE(S): A filing fee for each international class of goods and/or services for which use is being asserted (find current fee information).
(6) VERIFICATION: Verification of (1) through (4) above in an affidavit or signed declaration under 37 C.F.R. §2.20. See more information about verification.
See 37 C.F.R. §2.76(b); TMEP §1104.08.
An amendment to allege use may be filed online via the Trademark Electronic Application System (TEAS). Filing an amendment to allege use is not considered a response to an Office action. 37 C.F.R. §2.76(h); TMEP §1104. An applicant must file a separate response to any outstanding Office action. TMEP §1104; see 37 C.F.R. §2.76(h).
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration. However, if applicant responds to the refusal, applicant must also respond to the requirement set forth below.
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.
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).
Response Options
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.
/Jessica Hilliard/
Jessica Hilliard
Examining Attorney, Law Office 120
571-272-4031
Jessica.Hilliard@uspto.gov
RESPONSE GUIDANCE