Offc Action Outgoing

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:  January 08, 2020

 

INTRODUCTION

 

This Office action is supplemental to and supersedes the previous Office action issued on June 17, 2019 in connection with this application.  Based on information and/or documentation in applicant’s response, the trademark examining attorney now issues the following new refusal:  applicant’s Section 2(f) claim is insufficient to overcome the ornamental refusal.  See TMEP §§706, 711.02. 

 

In a previous Office action dated June 17, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following:  mark is merely an ornamental feature of the goods.  In addition, applicant was required to satisfy the following requirements:  amend the identification of goods and comply with the multiple class application requirements.

 

The following is a SUMMARY OF ISSUES:

 

• Ornamental Refusal – MAINTAINED AND CONTINUED
• Section 2(f) Claim of Acquired Distinctiveness is Insufficient to Overcome the Ornamental Refusal – NEW ISSUE
• Identification and Classification of Goods – MAINTAINED AND CONTINUED
• Multiple Class Application Requirements – MAINTAINED AND CONTINUED

 

Applicant must respond to all issues raised in this Office action and the previous June 17, 2019 Office action, within six (6) months of the date of issuance of this Office action.  37 C.F.R. §2.62(a); see TMEP §711.02.  If applicant does not respond within this time limit, the application will be abandoned.  37 C.F.R. §2.65(a).

 

ORNAMENTAL REFUSAL

 

Registration is again refused because the applied-for mark as used on the specimen of record is merely a decorative or ornamental feature of applicant’s clothing and, thus, does not function as a trademark to indicate the source of applicant’s clothing and to identify and distinguish applicant’s clothing from others.  Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051-1052, 1127; see In re Lululemon Athletica Can. Inc., 105 USPQ2d 1684, 1689 (TTAB 2013); In re Pro-Line Corp., 28 USPQ2d 1141, 1142 (TTAB 1993); TMEP §§904.07(b), 1202.03 et seq.

 

The size, location, dominance, and significance of the alleged mark as used on the goods are all relevant factors in determining the commercial impression of the applied-for mark.  See, e.g., In re Peace Love World Live, LLC, 127 USPQ2d 1400, 1403 (TTAB 2018) (quoting In re Hulting, 107 USPQ2d 1175, 1178 (TTAB 2013)); In re Lululemon Athletica Can. Inc., 105 USPQ2d at 1687 (quoting In re Right-On Co., 87 USPQ2d 1152, 1156 (TTAB 2008)); TMEP §1202.03(a).

 

With respect to clothing, consumers may recognize small designs or discrete wording as trademarks, rather than as merely ornamental features, when located, for example, on the pocket or breast area of a shirt.  See TMEP §1202.03(a).  Consumers may not, however, perceive larger designs or slogans as trademarks when such matter is prominently displayed across the front of a t-shirt.  See In re Pro-Line Corp., 28 USPQ2d at 1142; In re Dimitri’s Inc., 9 USPQ2d 1666, 1667-68 (TTAB 1988); TMEP §1202.03(a), (b), (f)(i), (f)(ii).

 

In this case, the submitted specimen shows the applied-for mark, BEN DEC IDA, located directly in the middle on the front of the t-shirt, where ornamental elements often appear.  See TMEP §1202.03(a), (b).  Furthermore, the mark is displayed in a relatively large size on the clothing such that it dominates the overall appearance of the goods.  Lastly, the applied-for mark appears to be a slogan that is used in a merely decorative manner that would be perceived by consumers as having little or no particular source-identifying significance.

 

Therefore, consumers would view the applied-for mark as a decorative or ornamental feature of the goods, rather than as a trademark to indicate the source of applicant’s goods and to distinguish them from others.  Thus, the refusal to register the mark based on an ornamental refusal is hereby maintained and continued.

 

In appropriate circumstances, applicant may overcome this refusal by satisfying one of the following options:

 

(1)        Submit a different specimen (a verified “substitute” specimen) that was in actual use in commerce at least as early as the filing date of the application (or prior to the filing of an amendment to allege use) and that shows proper trademark use for the identified goods in International Class 25.  Examples of acceptable specimens that show non-ornamental use on clothing include hang tags and labels used inside a garment.

 

(2)        Amend to the Supplemental Register, which is a second trademark register for marks not yet eligible for registration on the Principal Register, but which may become capable over time of functioning as source indicators.

 

(3)        Claim acquired distinctiveness under Trademark Act Section 2(f) by submitting evidence that the applied-for mark has become distinctive of applicant’s goods; that is, proof that applicant’s extensive use and promotion of the mark allowed consumers now directly to associate the mark with applicant as the source of the goods.

 

(4)        Submit evidence that the applied-for mark is an indicator of secondary source; that is, proof that the mark is already recognized as a source indicator for other goods or services that applicant sells/offers.    

 

(5)        Amend the filing basis to intent to use under Section 1(b).  This option will later necessitate additional fee(s) and filing requirements.

 

For an overview of the response options above and instructions on how to satisfy each option online using the Trademark Electronic Application System (TEAS) form, see the Ornamental Refusal webpage.

 

SECTION 2(f) CLAIM OF ACQUIRED DISTINCTIVENESS IS INSUFFICIENT TO OVERCOME THE ORNAMENTAL REFUSAL

 

Although applicant has included a Section 2(f) claim of acquired distinctiveness in its response, applicant’s attached evidence is not sufficient to establish acquired distinctiveness in this case.  First, applicant submitted a sworn statement attesting to the recognition and popularity of the mark among the consumer public.  See 15 U.S.C. §1052(f).  Although consumer affidavits and declarations that assert recognition of a mark as an indicator of source are relevant in establishing acquired distinctiveness, affidavits and declarations of an applicant’s employees, officers, and attorneys are usually self-serving and entitled to little weight.  See In re David Crystal, Inc., 296 F.2d 771, 773, 132 USPQ 1, 2 (C.C.P.A. 1961); In re Gray Inc., 3 USPQ2d 1558, 1560 (TTAB 1987); In re Cent. Counties Bank, 209 USPQ 884, 888 (TTAB 1981); TMEP §1212.06(c).

 

Furthermore, regarding applicant’s statement that it has expended a significant amount of time and money on advertisements and promotions to publicize the mark, allegations of sales and advertising expenditures do not per se establish that a term has acquired significance as a mark.  See TMEP §1212.06(b).  An applicant must also provide the actual advertising material so that the examining attorney may determine how the term is used, the commercial impression created by such use, and the significance the term would have to prospective purchasers.  TMEP §1212.06(b); see In re Boston Beer Co., 198 F.3d 1370, 1373, 53 USPQ2d 1056, 1058 (Fed. Cir. 1999); In re Packaging Specialists, Inc., 221 USPQ 917, 920 (TTAB 1984).

 

Additionally, applicant submitted a number of images showing applicant’s goods for sale in stores and online, as well as advertisements for applicant’s goods.  However, this evidence also does not show that applicant’s mark has acquired distinctiveness as a source indicator for a number of reasons.  First, many of the attached images show applicant’s mark, BEN DEC IDA, on the goods, but also show the wording TILDE & CO on the packaging for the goods or alongside the goods in the advertisements.  Therefore, these images give the commercial impression that BEN DEC IDA is merely a design element on goods that are sold under the TILDE & CO brand.  Thus, consumers would likely view TILDE & CO as the source identifier and BEN DEC IDA as merely an ornamental feature of the goods when they encounter these goods and advertisements in the marketplace.

 

Moreover, many of the attached images show additional goods provided under the TILDE & CO brand, with other ornamental and/or inspirational messages on it, such as “perfectamente imperfecta,” “guerrera,” “insiste persiste resiste,” “comienza el dia con un corazon agradecido,” “pode rosa,” and “supermujer.”  The attached evidence from Google Translate shows that this wording means “perfectly imperfect,” “warrior,” “insists persists resists,” “start the day with a grateful heart,” “powerful,” and “super woman,” respectively, and the wording “bendecida” means “blessed.”  Thus, these images give the commercial impression that the company TILDE & CO produces a number of goods with inspirational messages on them, and BEN DEC IDA is just one of these slogans or messages, rather than a source indicator for applicant’s goods.

 

And finally, applicant has only submitted evidence from its own advertising, webpages, and social media accounts, and there is nothing in the submitted evidence to demonstrate that consumers and/or third parties directly associate the mark with applicant as the source of the goods.  The ultimate test in determining acquisition of distinctiveness under Section 2(f) is not applicant’s efforts, but applicant’s success in educating the public to associate the claimed mark with a single source.  Apollo Med. Extrusion Techs., Inc. v. Med. Extrusion Techs., Inc., 123 USPQ2d 1844, 1856 (TTAB 2017) (citing In re Owens-Corning Fiberglass Corp., 774 F.2d 1116, 1125, 227 USPQ 417, 422 (Fed. Cir. 1985); In re LC Trademarks, Inc., 121 USPQ2d 1197, 1208 (TTAB 2016); In re Pennzoil Prods. Co., 20 USPQ2d 1753, 1760-61 (TTAB 1991)); TMEP §1212.06(b).

 

Thus, applicant’s submitted evidence has not established that the mark BEN DEC IDA has acquired distinctiveness as a source indicator for applicant’s goods in the marketplace. 

 

An applicant bears the burden of proving that a mark has acquired distinctiveness under Trademark Act Section 2(f).  In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 1335, 116 USPQ2d 1262, 1264 (Fed. Cir. 2015) (citing In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1422 (Fed. Cir. 2005)); TMEP §1212.01.  “To show that a mark has acquired distinctiveness, an applicant must demonstrate that the relevant public understands the primary significance of the mark as identifying the source of a product or service rather than the product or service itself.”  In re Steelbuilding.com, 415 F.3d at 1297, 75 USPQ2d at 1422. 

 

Applicant can explicitly request to remove the 2(f)-in-part claim if it would like to pursue another option to overcome the ornamental refusal.  Applicant may also respond to the refusal by arguing in support of registration and/or amending the application to seek registration on the Supplemental Register.  See 15 U.S.C. §1091(a); 37 C.F.R. §§2.47, 2.75(a); TMEP §§801.02(b), 816.  If applicant amends the application to the Supplemental Register, applicant is not precluded from submitting evidence and arguments against this refusal.  TMEP §816.04.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

IDENTIFICATION AND CLASSIFICATION OF GOODS

 

Applicant has classified “cosmetic bags” and “tote bags” in Class 25; however, the proper classification is Class 18.  Therefore, applicant may respond by (1) adding Class 18 to the application and reclassifying these goods in the proper international class, (2) deleting “cosmetic bags” and “tote bags” from the application, or (3) deleting the remainder of the items in the identification and reclassifying the specified goods in the proper international class.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.

 

Furthermore, the wording “cosmetic bags” in the identification of goods is indefinite and must be clarified because it does not specify the nature of the cosmetic bags provided, such as “cosmetic bags sold empty.”  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Because applicant did not address these issues in its response, the requirement to amend the identification and classification of goods is hereby maintained and continued.

 

Applicant may substitute the following wording, if accurate:

 

Class 18: cosmetic bags sold empty; tote bags

 

Class 25: t-shirts; caps being headwear; pajamas; scarfs

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e).

 

For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

MULTIPLE CLASS APPLICATION REQUIREMENTS

 

The application references goods based on use in commerce in more than one international class; therefore, applicant must satisfy all the requirements below for each international class:

 

(1)        List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).

 

(2)        Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).  Specifically, the application identifies goods based on use in commerce that are classified in at least 2 classes; however, applicant submitted a fee sufficient for only 1 class.  Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.

 

(3)        Submit verified dates of first use of the mark anywhere and in commerce for each international class.  See more information about verified dates of use.

 

(4)        Submit a specimen for each international class.  The current specimen is not acceptable for any international class.  See more information about specimens.

 

            Examples of specimens for goods include tags, labels, instruction manuals, containers, and photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale.  Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods.  

 

(5)        Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.”  See more information about verification.

 

See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).

 

See an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

RESPONSE GUIDELINES

 

For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

ASSISTANCE

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

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.    

 

 

/Maureen Reed/

Examining Attorney

Law Office 115

571-272-0851

maureen.reed@uspto.gov

 

 

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 January 08, 2020 for

U.S. Trademark Application Serial No. 88371674

 

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. 

 

 

/Maureen Reed/

Examining Attorney

Law Office 115

571-272-0851

maureen.reed@uspto.gov

 

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 January 08, 2020, 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.”