To: | Sharpened Productions, Inc (trademarkdocket@jmbm.com) |
Subject: | U.S. Trademark Application Serial No. 88364208 - TECHTERMS - 79219-1001 |
Sent: | January 16, 2020 11:28:55 AM |
Sent As: | ecom117@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88364208
Mark: TECHTERMS
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Correspondence Address: Jeffer Mangels Butler & Mitchell LLP 1900 Avenue of the Stars, 7th Floor
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Applicant: Sharpened Productions, Inc
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Reference/Docket No. 79219-1001
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 16, 2020
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.
This Office action is in response to applicant’s communication filed on December 20, 2019. The amendment to the recitation of services and the substitute specimen are acceptable.
The examining attorney has reviewed the applicant’s response and found that there is a new issue. The applicant has claimed Section 2(f) to overcome the descriptive refusal. However, the examining attorney finds that the mark is generic for the services identified. Thus the mark is now refused as follows.
Generic Refusal
Applicant seeks to register the mark TECHTERMS for use with “Providing customized on-line web pages and data feeds featuring user-defined information, which includes blog posts new media content, other on-line content and on-line web links to other websites”.
Registration was initially refused under Trademark Act Section 2(e)(1) because the applied-for mark is merely descriptive of applicant’s services. 15 U.S.C. §1052(e)(1). Applicant was also advised that the mark appears to be generic as well. In response, applicant amended the application to add a claim of acquired distinctiveness under Section 2(f). 15 U.S.C. §1052(f).
Registration is now refused because the applied-for mark is generic for applicant’s services. Trademark Act Sections 1, 2, 3, and 45, 15 U.S.C. §§1051, 1052, 1053, 1127; see TMEP §§1209.01(c) et seq., 1209.02(a)(ii). Thus, applicant’s claim of acquired distinctiveness under Section 2(f) is insufficient to overcome the refusal because “generic terms cannot be rescued by proof of distinctiveness or secondary meaning no matter how voluminous the proffered evidence may be.” Royal Crown Co. v. Coca-Cola Co., 892 F.3d 1358, 1365, 127 USPQ2d 1041, 1045 (Fed. Cir. 2018) (quoting In re Northland Aluminum Prods., 777 F.2d 1556, 1558, 227 USPQ2d 961, 962 (Fed. Cir. 1985)); see TMEP §1212.02(i).
“A mark is generic if its primary significance to the relevant public is the class or category of goods or services on or in connection with which it is used.” TMEP §1209.01(c)(i) (citing H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d at 989-90, 228 USPQ at 530; In re ActiveVideo Networks, Inc., 111 USPQ2d 1581, 1600 (TTAB 2014)). Determining whether a mark is generic requires a two-step inquiry:
(1) What is the genus of services at issue?
(2) Does the relevant public understand the designation primarily to refer to that genus of services?
In re Cordua Rests., Inc., 823 F.3d 594, 599, 118 USPQ2d 1632, 1634 (Fed. Cir. 2016) (citing H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d at 990, 228 USPQ at 530); TMEP §1209.01(c)(i).
Regarding the first part of the inquiry, the genus of the services may be defined by an applicant’s identification of services. See In re Cordua Rests., Inc., 823 F.3d at 602, 118 USPQ2d at 1636 (citing Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 640, 19 USPQ2d 1551, 1552 (Fed. Cir. 1991)); see also In re 1800Mattress.com IP, LLC, 586 F.3d 1359, 1361, 1363, 92 USPQ2d 1682, 1682, 1684 (Fed. Cir. 2009).
In this case, the application identifies the services as “Providing customized on-line web pages and data feeds featuring user-defined information, which includes blog posts new media content, other on-line content and on-line web links to other websites”, which adequately defines the genus at issue.
The attached evidence shows that applicant’s mark “TECHTERMS” is a composite of two terms TECH TERMS which means technical terms in the electronic field. Further, the attached evidence shows that this wording is essentially the apt or common name for the genus of applicant’s services which feature web information and blogs about technical terms and is thus generic. Specifically, this evidence shows the wording is generic of the genus because the technical terms is a genre of information that is useful to consumers who are not familiar with technical terms that are evolving in the electronic industry.
Regarding the second part of the inquiry, the relevant public is the purchasing or consuming public for the identified goods and/or services. Sheetz of Del., Inc. v. Doctor’s Assocs. Inc., 108 USPQ2d 1341, 1351 (TTAB 2013) (citing Magic Wand Inc. v. RDB Inc., 940 F.2d at 640, 19 USPQ2d at 1553). In this case, the relevant public comprises ordinary consumers who purchase applicant’s services, because there are no restrictions or limitations to the channels of trade or classes of consumers. The attached evidence from internet articles shows that the wording “TECH TERMS” in the applied-for mark means technical electronic terms and thus the relevant public would understand this designation to refer primarily to that genus of services because the content of the customized webpages is technical.
REFUSAL IN THE ALTERNATIVE – APPLIED-FOR MARK IS MERELY DESCRIPTIVE
In the alternative, if the applied-for mark is ultimately determined not to be generic by an appellate tribunal, then the refusal of registration based on the applied-for mark being merely descriptive of applicant’s services is maintained and continued for the reasons specified in the previous Office action. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.
In addition, applicant’s claim of acquired distinctiveness in the response is a concession that the mark sought to be registered is merely descriptive of applicant’s services. In re Leatherman Tool Grp., Inc., 32 USPQ2d 1443, 1444 (TTAB 1994); see Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 1577, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988).
APPLICANT’S EVIDENCE OF ACQUIRED DISTINCTIVENESS IS INSUFFICIENT
With respect to applicant’s claim of acquired distinctiveness, the applicant did not provide any evidence to support such claim other than its own claim of substantial and exclusive use for at least five years. See 37 C.F.R. §2.41. The caselaw which the applicant cited in support of its argument, is distinguishable because those cases showed use of marks that did not describe the goods or services identified. SMART SCREEN did not describe a screen saver software and DATAPORT did not describe gaming machine hardware.
However, in this case, TECHTERMS describes technical terms that the applicant provides on its website. In fact the evidence that the applicant attached from its website expressly states, “TECHTERMS is a free online dictionary of computer and Internet terms…. [T]he goal of TECHTERMS is simple – we want to make technical terms easy to understand. Instead of using high-level terminology, TECHTERMS definitions are written in simple everyday language.”
If the applied-for mark is ultimately determined to be merely descriptive and not generic, there is no Section 2(f) evidence to show acquired distinctiveness and is thus insufficient.
The amount and character of evidence needed to establish acquired distinctiveness depends on the facts of each case and particularly on the nature of the mark sought to be registered. Roux Labs., Inc. v. Clairol Inc., 427 F.2d 823, 829, 166 USPQ 34, 39 (C.C.P.A. 1970); In re Chevron Intellectual Prop. Grp. LLC, 96 USPQ2d 2026, 2030 (TTAB 2010); TMEP §1212.01. An applicant’s evidentiary burden of showing acquired distinctiveness increases with the level of descriptiveness of the mark sought to be registered; a more descriptive term requires more evidence. Royal Crown Co. v. Coca-Cola Co., 892 F.3d at 1365, 127 USPQ2d at 1045 (citing In re Steelbuilding.com, 415 F.3d 1293, 1300, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005)).
Applicant May Respond
Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
If the applicant has any questions or needs assistance in responding to this Office action, please call or e-mail the assigned examining attorney.
How to respond. Click to file a response to this nonfinal Office action.
/D. Beryl Gardner/
Trademark Examining Attorney
Law Office 117
571-272-9162 (O)
571-273-9162 (F)
beryl.gardner@uspto.gov
RESPONSE GUIDANCE