United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

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:  December 04, 2019

 

 This Office action is in response to applicant’s communication filed on November 12, 2019.  The amended identification of goods is accepted and made of record.  Based thereon, the applicant should note the following refusal to register.

 

Refusal to Register-Mark is Deceptive

Registration is refused because the applied-for mark consists of or includes deceptive matter in relation to the identified goods.  Trademark Act Section 2(a), 15 U.S.C. §1052(a).

 

A term is deceptive when all three of the following criteria are met:

 

(1)        Is the term misdescriptive of the character, quality, function, composition, or use of the goods [and/or services]?

 

(2)        If so, are prospective purchasers likely to believe that the misdescription actually describes the goods [and/or services]?

 

(3)        If so, is the misdescription likely to affect the purchasing decision of a significant portion of relevant consumers?

 

In re Tapco Int’l Corp., 122 USPQ2d 1369, 1371 (TTAB 2017) (citing In re Budge Mfg. Co., 857 F.2d 773, 775, 8 USPQ2d 1259, 1260 (Fed. Cir. 1988)); TMEP §1203.02(b); see also In re Spirits Int’l, N.V., 563 F.3d 1347, 1353, 1356, 90 USPQ2d 1489, 1492-93, 1495 (Fed. Cir. 2009) (holding that the test for materiality incorporates a requirement that a “significant portion of the relevant consumers be deceived”).

 

In this case, applicant’s mark includes the wording “SUEDE”, that indicates the goods contain suede.  However, according to the identification of goods, the applicant’s goods do not in fact contain this ingredient or component, but instead, contain synthetic suede.

 

Consumers would be likely to believe this misdescription in the mark, because the attached evidence shows that it is common in applicant’s industry for such goods to be made of suede fabric, and consumers have come to expect such ingredient or component.  Specifically, this evidence shows that suede is a high-quality form of leather, characterized by a soft, smooth surface, and is popular for fashion items.  See for example, the attached article from the MASTERCLASS web site about suede fabric.

 

A misdescriptive ingredient or component would be material to the purchasing decision of a significant portion of the relevant consumers when the evidence demonstrates that the misdescription would make the product or service more appealing or desirable to prospective purchasers.  See In re White Jasmine LLC, 106 USPQ2d 1385, 1392 (TTAB 2013) (citing In re Juleigh Jeans Sportswear Inc., 24 USPQ2d 1694, 1698-99 (TTAB 1992)); TMEP §1203.02(d). 

 

In the present case, the attached evidence shows that products with the ingredient or component suede, are more appealing or desirable because they are a soft, high-quality, durable, pliable and long lasting fabric, typically used in high-end fashion goods.  Thus, the misdescription is likely to affect a significant portion of the relevant consumers’ decision to purchase applicant’s goods.  In view of the fact that the applicant’s goods are made of synthetic suede, not real suede, use of the term “SUEDE” in the applicant’s mark is deceptive.  The statement in the applicant’s response that SUPRA “clearly indicates that the goods are not traditional sued products, but otherwise enhanced (i.e., made of synthetic, animal-friendly material)” is noted, but is not persuasive.  As shown in the attached dictionary definition, the term “SUPRA” is a prefix defined as “over or above” and when combined with the term “SUEDE” does not clearly indicate that the goods are not suede.  Purchasers who encounter this mark are likely to mistakenly believe that “SUPRA” refers to the quality of the suede, rather than viewing the mark as an indication that the goods are not suede.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.

 

 

 

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.    

 

 

/Patty Evanko/

Patty Evanko

Law Office 119

571-272-9404

patty.evanko@uspto.com (informal questions only)

 

 

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 December 04, 2019 for

U.S. Trademark Application Serial No. 88364713

 

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. 

 

 

/Patty Evanko/

Patty Evanko

Law Office 119

571-272-9404

patty.evanko@uspto.com (informal questions only)

 

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 December 04, 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.”