To: | Johnson, Richard (tawnya@trwlawgroup.com) |
Subject: | U.S. Trademark Application Serial No. 88400869 - SPEXHAT - N/A |
Sent: | February 03, 2020 08:52:39 PM |
Sent As: | ecom115@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88400869
Mark: SPEXHAT
|
|
Correspondence Address: 19900 MACARTHUR BOULEVARD, SUITE 530
|
|
Applicant: Johnson, Richard
|
|
Reference/Docket No. N/A
Correspondence Email Address: |
|
FINAL 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) 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: February 03, 2020
This Office action is in response to applicant’s communication filed on January 10, 2020.
In its response, applicant provided arguments in opposition to the examining attorney’s refusal pursuant to Section 2(e)(1) of the Trademark Act.
Applicant’s arguments have been considered and found unpersuasive for the reason(s) set forth below.
Refusal – Mark is Merely Descriptive
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). See also In re Franklin Cnty. Historical Soc’y, 104 USPQ2d 1085, 1086 (TTAB 2012) (holding CENTER OF SCIENCE AND INDUSTRY merely descriptive of operating a museum and conducting workshops, programs, and demonstrations in the field of science); In re Phoseon Tech., Inc., 103 USPQ2d 1822, 1823 (TTAB 2012) (holding SEMICONDUCTOR LIGHT MATRIX merely descriptive of light and UV curing systems composed primarily of light-emitting diodes (LEDs) for industrial and commercial applications); In re Putman Publ’g Co., 39 USPQ2d 2021, 2021-22 (TTAB 1996) (holding FOOD & BEVERAGE ON-LINE merely descriptive of news and information service for the food processing industry); In re Copytele, Inc., 31 USPQ2d 1540, 1541-42 (TTAB 1994) (holding SCREEN FAX PHONE merely descriptive of facsimile terminals employing electrophoretic displays).
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
In its response, applicant argues that its mark is merely suggestive. A mark is suggestive if some imagination, thought, or perception is needed to understand the nature of the goods and/or services described in the mark; whereas a descriptive term immediately and directly conveys some information about the goods and/or services. See Stoncor Grp., Inc. v. Specialty Coatings, Inc., 759 F.3d 1327, 1332, 111 USPQ2d 1649, 1652 (Fed. Cir. 2014) (citing DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251-52, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012)); TMEP §1209.01(a).
Indeed, applicant asserts that “SPEXHAT does not describe a quality, characteristic, function or purpose of the relevant goods” and that consumers “would not immediately assume that the phrase SPEXHAT referred to the headwear that is identified in the application.” See Response.
Applicant’s assertions are entirely unfounded and go contrary to the plain meanings of the words “specs” and “hat.” Further, the fact that applicant’s mark appears as a single word has no bearing on the issue of descriptiveness. Even a “telescoped mark,” which consists of two or more words combined to create a single word that shares letters (unlike here, where the respective words SPEX and HAT share no letters), is merely descriptive or generic if the individual words are descriptive or generic and if the words retain their descriptive or generic meaning within the telescoped mark. See In re Omaha Nat’l Corp., 819 F.2d 1117, 1118, 2 USPQ2d 1859, 1860 (Fed. Cir. 1987) (holding FIRSTIER merely descriptive of banking services); In re Greenliant Sys. Ltd., 97 USPQ2d 1078, 1083 (TTAB 2010) (holding NANDRIVE, a telescoped mark of the generic term “nand drive,” generic for electronic integrated circuits, including flash memory drives); TMEP §§1209.01(c)(i), 1209.03(d).
“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).
In relation to applicant’s actual goods, the term SPEXHAT is highly descriptive of applicant’s goods.
Specifically, as noted previously in the Office Action dated July 10, 2019, the term “spex” is an obvious phonetic equivalent of the commonly-known word “specs.” Further, as the record reflects, “specs” are short for “spectacles” or eyeglasses. See attached. In addition, the term “HAT” is a generic reference to the “hats” offered by applicant.
Thus, as used in connection with the goods, applicant’s mark clearly describes applicant’s goods, namely, that applicant provides hats adapted for use in connection with holding/securing eyeglasses (including “specs”/spectacles). Accordingly, the applied for mark is merely descriptive and registration is refused on the Principal Register under Section 2(e)(1) of the Trademark Act.
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 request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).
Marc J. Leipzig
/Marc J. Leipzig/
Law Office 115
Trademark Examining Attorney
Phone: (571) 272-2104
marc.leipzig2@uspto.gov
RESPONSE GUIDANCE