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 11, 2020

 

This Office action is in response to applicant’s communication filed on 1/22/20.  The examining attorney acknowledges and has entered into the record the amendment to the identification of goods.  After due consideration of applicant’s arguments, the refusal pursuant to Sections 1, 2, and 45 of the Trademark Act are repeated and made final. 

 

SECTIONS 1, 2 AND 45 FAILURE TO FUNCTION REFUSAL

 

Registration was refused because the applied-for mark, DON’T TALK TO ME, is a slogan that does not function as a trademark to indicate the source of applicant’s goods and to identify and distinguish them from others.  Trademark Act Sections 1, 2, 3, and 45, 15 U.S.C. §§1051-1053, 1127.  In this case, the applied-for mark is a commonplace term, message, or expression widely used by a variety of sources that merely conveys an ordinary, familiar, well-recognized concept or sentiment.  See In re Volvo Cars of N. Am., Inc., 46 USPQ2d 1455, 1460-61 (TTAB 1998) (holding DRIVE SAFELY not registrable for automobiles and automobile parts because the mark would be perceived merely as an “everyday, commonplace safety admonition”); In re Remington Prods., Inc., 3 USPQ2d 1714, 1715-16 (TTAB 1987) (holding PROUDLY MADE IN USA not registrable for electric shavers because the mark would be perceived merely as a common message encouraging the purchase of domestic-made products); TMEP §1202.04(b). 

 

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 applicant seeks registration for the applied-for mark, DON’T TALK TO ME for “Shirts; pants; shorts; underwear; boxer shorts; hats; caps; sweatshirts; sweaters; skirts; gloves; socks; shoes; boots; coats; jackets; swimwear; belts; scarves; pajamas; slippers; infant wear; hosiery; Halloween and masquerade costumes and masks sold in connection therewith; ties; tops; bottoms; headwear; footwear; all of the foregoing provided to promote and in connection with Applicant's entertainment services.”

 

As seen from the previously attached third-party websites [again attached]:

http://tenor.com/search/dont-talk-to-me-gifs

http://www.redbubble.com/people/eglads/works/11669251-dont-talk-to-me?p=t-shirt

http://www.etsy.com/market/don't_talk_to_me

http://www.google.com/search?q=%22don%27t+talk+to+me%22+signs&tbm=shop&source=lnms&sa=X&ved=0ahUKEwiF9ezk9c3jAhUBT98KHbesCHAQ_AUIDigC&biw=1536&bih=854&dpr=1.25

http://www.google.com/search?biw=1536&bih=854&tbm=shop&ei=-n84Xc7LF8HM_Abvq6GgCw&q=%22don%27t+talk+to+me%22+shirts&oq=%22don%27t+talk+to+me%22+shirts&gs_l=psy-ab.3...58454.59978.0.60427.6.6.0.0.0.0.59.280.6.6.0....0...1c.1.64.psy-ab..0.5.234...0.0.283hQCAXZV8

http://www.google.com/search?q=don%27t+talk+to+me+mugs&source=lnms&tbm=isch&sa=X&ved=0ahUKEwiNouCT9M3jAhWIc98KHVTyCIwQ_AUIEigC&biw=1536&bih=854

as well as the additional attached sampling of third-party websites:

http://www.etsy.com/listing/673847909/dont-talk-to-me-hoodie-dont-talk-to-me?ga_order=most_relevant&ga_search_type=all&ga_view_type=gallery&ga_search_query=don%26%23039%3Bt+talk+to+me&ref=sr_gallery-1-2&frs=1

 

 

http://www.etsy.com/listing/745929811/dont-talk-to-me-sassy-sayings-tee?ga_order=most_relevant&ga_search_type=all&ga_view_type=gallery&ga_search_query=don%26%23039%3Bt+talk+to+me&ref=sr_gallery-1-6&col=1

 

http://www.etsy.com/listing/638569293/introvert-shirt-awkward-shirt-please-go?ga_order=most_relevant&ga_search_type=all&ga_view_type=gallery&ga_search_query=don%26%23039%3Bt+talk+to+me&ref=sr_gallery-1-8&frs=1&col=1

 

http://www.amazon.com/Dont-Talk-Me-Me-Shirt/dp/B07PM1VL58

 

http://www.spreadshirt.com/shop/design/dont+talk+to+unisex+baseball+t-shirt-D5d59de8e162c5f3984967a96?sellable=vrdkd3am8GHvlQZwXZ0j-951-18

 

http://www.spreadshirt.com/shop/design/dont+talk+to+me+mens+premium+t-shirt-D5e1f3f83f937643cc837bf6e?sellable=yrXNJM23x9FmqGAe5GYE-812-7

 

http://www.zazzle.com/dont_talk_to_me_t_shirt-235300452887192377

 

http://www.zazzle.com/dont_talk_to_me_t_shirt-235358801359399229

 

http://www.x10sivclothing.com/products/dont-talk-to-me-mens-t-shirt

 

http://www.bonfire.com/dont-talk-to-me-rosebud-apparel/?utm_source=pinterest&utm_medium=campaign_page&utm_campaign=dont-talk-to-me-rosebud-apparel&utm_content=default

 

shows that this expression is commonly used expression and conveys a message indicating one wants to be left alone.  Because consumers are accustomed to seeing this 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 but rather as only conveying an informational message.

 

Applicant references TMEP §1203.03 et seq. regarding the factors to be considered in determining whether the public would perceive an applied-for mark as a trademark or merely as a decorative or ornamental feature.  It should be noted that this section of the TMEP pertains to a refusal on the basis of ornamentation.  Although the examining attorney advised the applicant an ornamentation refusal may be issued when a use statement under §1(c) or §1(d) of the Trademark Act was filed, the refusal at hand is not ornamentation, but rather failure to function.  Therefore the applicant’s reliance on these factors is misplaced.

 

Applicant also states their companion application Serial No. 88415164 for entertainment services has been allowed and contends “the relevant purchasing public will undoubtedly recognize Applicant’s Mark used in connection with its Amended Goods as an extension of Applicant’s entertainment services.” [Applicant’s response on page 2.]  Applicant’s secondary source argument is not appropriate.  First, as discussed above, the issue at hand is not a refusal based on ornamentation, but rather failure to function.  Secondly, assuming a secondary source argument could be made regarding failure to function refusals, the applicant still could not support the secondary source claim.  Applicant’s entertainment services application is based on intent-to-use.  Ownership of an intent-to-use for which no allegation of use under §1(c) or §1(d) of the Trademark Act has been filed is not sufficient to show secondary source.  TMEP §1202.03(c) [emphasis added].

 

Lastly, applicant contends the USPTO has allowed the registration of marks which include a message or expression that is arguably familiar.  Prior decisions and actions of other trademark examining attorneys in registering other marks have little evidentiary value and are not binding upon the USPTO or the Trademark Trial and Appeal Board.  TMEP §1207.01(d)(vi); see In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1793 n.10 (TTAB 2017).  Each case is decided on its own facts, and each mark stands on its own merits.  In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d at 1793 n.10 (quoting In re Boulevard Entm’t, 334 F.3d 1336, 1343, 67 USPQ2d 1475, 1480 (Fed. Cir. 2003)).

 

In the present case the evidence clearly demonstrates the expression DON’T TALK TO ME is commonly used in everyday speech by many different sources, and that consumers are accustomed to seeing this expression.  Thus they would not perceive it as a mark identifying the source of applicant’s goods but rather as only conveying an informational message.  For the forgoing reasons, the failure to function refusal to register pursuant to Sections 1, 2, and 45 of the Trademark Act must be repeated and made final.

 

As stated previously, 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).

 

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 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).

 

 

/Karen K. Bush/

Trademark Examining Attorney

Law Office 108

571-272-9136

Karen.Bush@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 11, 2020 for

U.S. Trademark Application Serial No. 88415167

 

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. 

 

 

/Karen K. Bush/

Trademark Examining Attorney

Law Office 108

571-272-9136

Karen.Bush@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 11, 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.”