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 28, 2020

 

 

INTRODUCTION

 

Please note, the Office has reassigned this application to the undersigned trademark examining attorney.

 

This Office action is supplemental to and supersedes the previous Office action issued on 7/22/2019 in connection with this application.  Based on information and/or documentation in applicant’s response, the trademark examining attorney has identified an issue with applicant’s claim of acquired distinctiveness under Trademark Act Section 2(f).  See TMEP §§706, 711.02. 

 

In a previous Office action(s) dated 7/22/2019, the trademark examining identified the following issues:

• Section 2(d) refusal for a likelihood of confusion with 2 registered marks
• Specimen Unacceptable for class 42
• Disclaimer of RADIO.COM required
• Refusal because mark on specimen and drawing did not match
• Requirement to amend color claim, mark description, and/or drawing

 

Based on applicant’s response, the trademark examining attorney notes that the following requirement(s) have been satisfied: 

• Specimen is acceptable in class 42
• Differing Marks in Drawing and Specimen is resolved (applicant provided amended mark drawing)
• Color Claim, Mark Description and Drawing requirements are resolved

 

See TMEP §713.02. 

 

The following is a SUMMARY OF ISSUES that applicant must address:

 

• Section 2(d) Refusal – Likelihood of Confusion (Continued and Maintained)
• Disclaimer of RADIO.COM Required (Continued and Maintained)
• Applicant’s Claim of Acquired Distinctiveness Cannot Be Accepted (New Issue)

 

Applicant must respond to all issues raised in this Office action and the previous 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).

 

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

In the Office action, dated 7/22/2019, registration was refused under Trademark Act Section 2(d) for a likelihood of confusion with the following registered marks: 5706090 (R RADIO PLAYER) and 4796015 (R RADIO).

 

In a response, dated 1/21/2020, applicant provided arguments in support of registration.  The response has been reviewed and found to be unpersuasive at this time.  Generally, the marks are confusingly similar due to the common wording R RADIO.  Applicant’s mark includes .COM, but such wording is merely an internet address and does not serve to indicate source.  Further, .COM fails to differentiate the mark in such a manner that consumers would not be confused.  This is coupled with the highly related goods/services concerning the provision of music, programs, and information that is generally associated with radio or other streaming services.  Therefore, the refusal to register under Section 2(d) is continued and maintained.  Please note that applicant’s response will be fully addressed in a subsequent final office action, as appropriate.

 

Please see the following issue.

 

 

DISCLAIMER REQUIRED

 

In a previous Office action, dated 7/22/2019, a disclaimer of RADIO.COM was required.  In response, dated 1/21/2020, applicant claimed acquired distinctiveness under Section 2(f), in part, to RADIO.COM.  For the reasons provided below, the claim of acquired distinctiveness cannot be accepted, and the requirement to disclaim RADIO.COM is continued and maintained.

 

Please see the following issue.

 

 

SECTION 2(f) ACQUIRED DISTINCTIVENESS

 

Applicant’s Trademark Act Section 2(f) claim based on five years’ use is insufficient to show acquired distinctiveness because applicant’s dates of use of the mark indicate that applicant has not actually used the mark in commerce for the requisite time period.  See 15 U.S.C. §1052(f).  For this claim to be accepted, applicant’s substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate must have been for at least five years before the date on which the claim is made.  15 U.S.C. §1052(f); 37 C.F.R. §2.41(a)(2); TMEP §1212.05.  And such use must have been in a type of commerce that may be regulated by the U.S. Congress.  See 15 U.S.C. §§1052(f), 1127.

 

In the present case, applicant asserted a claim of acquired distinctiveness on 1/21/2020.  Five years prior to this date would be approximately 1/2015.  However, the date of first use in commerce specified in the application is 8/2018, which is less than five years prior to the date the distinctiveness claim was made.

 

Please note, the wording RADIO.COM appears to be generic.  The amount and character of evidence required to establish acquired distinctiveness under Trademark Act Section 2(f) depends on the facts of each case and particularly on the nature of the mark sought to be registered.  In re Gen. Mills IP Holdings II, LLC, 124 USPQ2d 1016, 1018 (TTAB 2017) (citing Roux Labs., Inc. v. Clairol Inc., 427 F.2d 823, 829, 166 USPQ 34, 39 (C.C.P.A. 1970); In re Hehr Mfg. Co., 279 F.2d 526, 528, 126 USPQ 381, 383 (C.C.P.A. 1960)); TMEP §1212.01.

 

An applicant’s evidentiary burden of showing acquired distinctiveness increases with the level of descriptiveness of the mark sought to be registered; a more descriptive term requires more evidence.  Royal Crown Co. v. Coca-Cola Co., 892 F.3d 1358, 1365, 127 USPQ2d 1041, 1045 (Fed. Cir. 2018) (citing In re Steelbuilding.com, 415 F.3d 1293, 1300, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005)).

 

However, “generic terms cannot be rescued by proof of distinctiveness or secondary meaning no matter how voluminous the proffered evidence may be.”  Id. at 1370, 127 USPQ2d at 1048 (quoting In re Northland Aluminum Prods., 777 F.2d 1556, 1558, 227 USPQ2d 961, 962 (Fed. Cir. 1985)); see TMEP §1212.02(i).

 

Alternatively, applicant may disclaim the wording RADIO.COM. 

 

 

RESPONSE GUIDELINES

 

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.

 

Communication. 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.    

 

 

/Jeane Yoo/

Examining Attorney

Law Office 120

(571) 272-5021

Jeane.Yoo@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 28, 2020 for

U.S. Trademark Application Serial No. 88414057

 

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. 

 

 

/Jeane Yoo/

Examining Attorney

Law Office 120

(571) 272-5021

Jeane.Yoo@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 28, 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.”