Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

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

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on 21 January 2020.

 

In a previous Office action dated 19 July 2019, applicant was required to satisfy the following requirement: disclaimer.

 

Based on applicant’s response, the trademark examining attorney maintains and now makes FINAL the requirement in the summary of issue below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUE MADE FINAL that applicant must address:

• Requirement – Disclaimer

 

REQUIREMENT – DISCLAIMER

 

In the 19 July 2019 Office Action applicant was required to provide a disclaimer of the wording “DISPLAY VENTURES” in its mark. The requirement for “DISPLAY” is now withdrawn. As applicant has argued against this requirement, the requirement is now made final for the reasons detailed below.

 

Applicant must provide a disclaimer of the unregistrable part of the applied-for mark even though the mark as a whole appears to be registrable.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).  A disclaimer of an unregistrable part of a mark will not affect the mark’s appearance.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).

 

In this case, applicant must disclaim the wording “VENTURES” because it is not inherently distinctive.  This unregistrable term at best are merely descriptive of a characteristic of applicant’s services.  See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a). 

 

The evidence attached to the 19 July 2019 Office Action defines “ventures” as “a business enterprise involving some risk in expectation of gain,” and shows that applicant itself describes its services as a “new venture effort” concerning working with and investing in developing an new businesses. Further, the attached third-party registrations show that the wording “VENTURES” is commonly disclaimed for being descriptive of same and similar services to those of applicant. As such, this evidence shows that the wording “VENTURES” in the applied-for mark is merely descriptive of a characteristic of applicant’s services, namely, that applicant’s services are provided by a business enterprise which involves some risk via its clients in expectation of achieving gains. 

 

Applicant argues against the disclaimer requirement on grounds that the mark creates a “single and distinct commercial impression” and as such is unitary. The examining attorney respectfully disagrees, as a term or phrase is unitary if it consists of elements that create a single commercial impression or have a distinct commercial impression independent of the constituent elements.  TMEP §1213.05, (b).  The test for determining whether a mark is unitary focuses on whether the elements of a mark are so integrated or merged together that they cannot be regarded as separable.  TMEP §1213.05; see In re Kraft, Inc., 218 USPQ 571, 573 (TTAB 1983).  However, if the elements are considered separable, the matter is not unitary and the unregistrable constituent elements may be disclaimed.  See In re Ginc UK Ltd., 90 USPQ2d 1472, 1477 (TTAB 2007); In re Brown-Forman Corp., 81 USPQ2d 1284, 1288 (TTAB 2006); TMEP §1213.05(b)(iv), (g), (g)(i).

 

In the instant matter, applicant’s mark UDC VENTURES is comprised of two separable terms, UDC and VENTURES. Although applicant argues that “VENTURES” is not descriptive of “business management and advice” services, this argument is without merit. As previously discussed, “VENTURES” refers to “a business enterprise involving some risk in expectation of gain” which can include businesses which provide business management and advisory services. Further, the attached third-party registrations show that the wording “VENTURES” is commonly disclaimed when used in connection with same and similar services as those of applicant, i.e, business management and advisory services, and capital, equity, and credit services.

 

Applicant further argues that the wording “VENTURES” is not merely descriptive based upon other third-party registrations, and lists thirteen marks in support of its contention. The examining attorney is not persuaded, and first notes that applicant has not provided the actual third-party registrations for these marks, but rather has only listed these marks via their respective case law decisions. As such, it is unclear whether applicant is referencing active registrations or not. The mere submission of a list of registrations or a copy of a private company search report does not make such registrations part of the record.  See In re Peace Love World Live, LLC, 127 USPQ2d 1400, 1405 n.17 (TTAB 2018) (citing In re 1st USA Realty Prof’ls, 84 USPQ2d 1581, 1583 (TTAB 2007); In re Duofold Inc., 184 USPQ 638, 640 (TTAB 1974)); TBMP §1208.02; TMEP §710.03.

 

To make third party registrations part of the record, an applicant must submit copies of the registrations, or the complete electronic equivalent from the USPTO’s automated systems, prior to appeal.  In re Star Belly Stitcher, Inc., 107 USPQ2d 2059, 2064 (TTAB 2013); TBMP §1208.02; TMEP §710.03.  Accordingly, these registrations will not be considered.

 

Further, it is noted that applicant’s cited registrations are not applicable to the instant matter given the ages of the respective cases and subsequent changes in case law since (the earliest case cited being Ex parte Pillsbury Flour Mills Co., 23 USPQ 168 (1934) and the latest case cited being Worthington Foods, Inc. v. Kellogg Co., 732 F.Supp. 1417 (1990). Further, applicant’s cited marks are wholly different and separable from the instant matter (i.e., telescoped and compound marks vs. a mark comprised of two wholly separable components, and findings where a court found that the entire mark was not descriptive, but rather only a single term within the mark was descriptive).

 

Moreover, a term that was once arbitrary or suggestive may lose its distinguishing and origin-denoting characteristics through use in a descriptive sense over a period of time, and may come to be regarded by the purchasing public as nothing more than a descriptive designation.  In re Digital Research, Inc., 4 USPQ2d 1242, 1243 (TTAB 1987); In re Int’l Spike, Inc., 190 USPQ 505, 507 (TTAB 1976).

 

Thus, trademark rights are not static, and eligibility for registration must be determined on the basis of the facts and evidence in the record at the time registration is sought, which includes during examination and any related appeal.  In re Chippendales USA Inc., 622 F.3d 1346, 1354, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010); In re Morton-Norwich Prods., Inc., 671 F.2d 1332, 1344, 213 USPQ 9, 18 (C.C.P.A. 1982); In re Thunderbird Prods. Corp., 406 F.2d 1389, 1391, 160 USPQ 730, 732 (C.C.P.A. 1969).

 

Applicant argues that any doubt regarding the mark’s descriptiveness should be resolved on applicant’s behalf.  E.g., In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 1571 4 USPQ2d 1141, 1144 (Fed. Cir. 1987); In re Grand Forest Holdings, Inc., 78 USPQ2d 1152, 1156 (TTAB 2006).  However, in the present case, the evidence of record leaves no doubt that the mark is merely descriptive.

 

Applicant may respond to this issue by submitting a disclaimer in the following format: 

 

No claim is made to the exclusive right to use “VENTURES” apart from the mark as shown. 

 

For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.   

 

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).

 

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 requirement 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. 

 

 

/Joan M. Blazich/

Joan M. Blazich

Trademark Examining Attorney

Law Office 122

(571) 272-7810

joan.blazich@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 February 03, 2020 for

U.S. Trademark Application Serial No. 88413399

 

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. 

 

 

/Joan M. Blazich/

Joan M. Blazich

Trademark Examining Attorney

Law Office 122

(571) 272-7810

joan.blazich@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 February 03, 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.”