To: | Izzy & Liv LLC (raven.willis@newmillennialegal.com) |
Subject: | U.S. Trademark Application Serial No. 88380822 - OUT HERE BEING CUTE - N/A |
Sent: | November 12, 2019 02:17:31 PM |
Sent As: | ecom123@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88380822
Mark: OUT HERE BEING CUTE
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Correspondence Address:
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Applicant: Izzy & Liv LLC
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Reference/Docket No. N/A
Correspondence Email Address: |
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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) and/or Electronic System for Trademark Trials and Appeals (ESTTA). A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action.
Issue date: November 12, 2019
This Office action is in response to applicant’s communication filed on October 15, 2019.
In a previous Office action dated June 24, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following: Refusal Under Sections 1, 2, 3, and 45—Widely Used Commonplace Message/Expression.
Further, the trademark examining attorney maintains and now makes FINAL the refusal in the summary of issues below. See 37 C.F.R. §2.63(b); TMEP §714.04.
SUMMARY OF ISSUES MADE FINAL that applicant must address:
REFUSAL UNDER SECTIONS 1, 2, 3, AND 45—WIDELY USED COMMONPLACE MESSAGE/EXPRESSION—MAINTAINED AND MADE FINAL
Terms and expressions that merely convey an informational message are not registrable. In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229 (TTAB 2010). Determining whether the term or expression functions as a trademark or service mark depends on how it would be perceived by the relevant public. In re Eagle Crest, Inc., 96 USPQ2d at 1229; In re Aerospace Optics, Inc., 78 USPQ2d 1861, 1862 (TTAB 2006); TMEP §1202.04. “The more commonly a [term or expression] is used, the less likely that the public will use it to identify only one source and the less likely that it will be recognized by purchasers as a trademark [or service mark].” In re Hulting, 107 USPQ2d 1175, 1177 (TTAB 2013) (quoting In re Eagle Crest, Inc., 96 USPQ2d at 1229); TMEP §1202.04(b).
The attached evidence from http://www.lipstickalley.com/threads/royal-tea-party-part-11.1611370/page-288 and http://people.com/shop/fashion/plus-size-clothing-a1081315785.html and http://www.imgrumsite.com/hashtag/swimsuitbabe and http://www.amazon.com/Here-Being-Cute-T-Shirt-S010174/dp/B07D6F6BWQ and http://www.captivatinginspiration.com/product/out-here-being-cute-t-shirt-2/ shows that this term or expression is commonly used to refer to social media posts and conveys a message of inspiration. Because consumers are accustomed to seeing this term or expression commonly used in everyday speech by many different sources, they would not perceive it as a mark identifying the source of applicant’s goods and/or services but rather as only conveying an informational message.
Applicant’s Arguments
First, the applicant argues that the purchasing public associates the phrase OUT HERE BEING CUTE with the applicant, Izzy & Liv. To support this claim, the applicant provides an example of two social media posts to support its claim. However, neither post demonstrates the applied-for mark, OUT HERE BEING CUTE, being identified as the source of applicant’s goods. Instead, they only show a reference to applicant and the phrase being used as a message with no association to any particular goods made by the applicant.
Furthermore, applicant provides a search results page from Google and explains that most of the references from Google are to applicant’s website. However, a search results summary from an Internet search engine has limited probative value because such a list does not show the context in which the term or phrase is used on the listed web pages and may not include sufficient surrounding text to show the context within which the term or phrase is used. TBMP §1208.03; see In re Bayer AG, 488 F.3d 960, 967, 82 USPQ2d 1828, 1833 (Fed. Cir. 2007); In re Star Belly Stitcher, Inc.,107 USPQ2d 2059, 2062 n.3 (TTAB 2013); TMEP §710.01(b).
Also, the applicant discusses the evidence offered by the Office to support the conclusion that the term is a widely used common place message. With respect to the evidence from http://www.lipstickalley.com/threads/royal-tea-party-part-11.1611370/page-288, the applicant argues that the phrase “out here being cute” in the link is being used to provide “general information” and “an opinion about the individuals in the picture.” While applicant is correct in its claims, this supports the conclusion that the phrase is a commonplace message as it is not being used to distinguish the goods of a party in commerce but instead only to convey a message.
Regarding the evidence at http://www.imgrumsite.com/hashtag/swimsuitbabe, applicant notes that the phrase is “used on in an informational context.” Again, applicant is correct as this is the basis for the refusal as expressions that merely convey an informational message are not registrable. See In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229 (TTAB 2010).
With respect to the evidence at http://people.com/shop/fashion/plus-size-clothing-a1081315785.html, applicant argues that this is simply an infringing use of the applicant’s common law rights and copyright rights to the mark. Here, it is beyond the scope of this ex parte proceeding to determine the copyright or common law rights that applicant may have with respect to this wording.
Thus, because consumers are accustomed to seeing this term or expression commonly used in everyday speech by many different sources, they would not perceive it as a mark identifying the source of applicant’s goods and/or services but rather as only conveying an informational message.
An applicant may not overcome this refusal by amending the application to seek registration on the Supplemental Register or asserting a claim of acquired distinctiveness under Section 2(f). TMEP §1202.04(d); see In re Eagle Crest, Inc., 96 USPQ2d at 1229. Nor will submitting a substitute specimen overcome this refusal. See TMEP §1202.04(d).
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 final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB)
/Collier L Johnson II/
Collier L Johnson II
Examining Attorney
Law Office 123
571-270-0878
collier.johnson@uspto.gov
RESPONSE GUIDANCE