| To: | Ting Huang (jiteteam@outlook.com) |
| Subject: | U.S. Trademark Application Serial No. 88422092 - TOUGH - N/A |
| Sent: | August 01, 2019 07:19:07 PM |
| Sent As: | ecom113@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 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88422092
Mark: TOUGH
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Correspondence Address:
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Applicant: Ting Huang
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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). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: August 01, 2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SUMMARY OF ISSUES
(1) Section 2(d) Likelihood of Confusion Refusal
(2) Prior Pending Application
(3) Section 2(e)(1) Mere Descriptiveness Refusal
(4) Additional Information Required
(5) Specimen Refusal – New Specimen or Amendment of Filing Basis Required
(6) Information about Specimen Required
(7) Representative Specimens Required
(8) Amendment of Identification of Goods Required
SECTION 2(D) LIKELIHOOD OF CONFUSION REFUSAL
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 3182098, 3255512, and 2452369. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
Applicant has applied to register the standard character mark TOUGH for use in connection with “Aero-dynamic fairings for vehicles; Anti-theft locks for use on automobile steering wheels; Automobile hoods; Automobile windshields; Automobiles; Automotive windshield shade screens; Axle boot kits for use with land vehicles; Bicycle stands; Brake blocks for land vehicles; Brake discs for motorcycles; Brake discs for vehicles; Brake levers for cycles; Brake linings for vehicles; Brake pads for automobiles; Brakes for vehicles; Campers; Chains for motor cars; Clutches for land vehicles; Covers for vehicle steering wheels; Direction signals for vehicles; Directional signals for vehicles; Engine mounts for land vehicles; Fitted car seat covers; Fitted vehicle covers for motorcycles, automobiles, motorized golf carts for the purpose of protecting against harsh weather, shielding from bird droppings; Fitted vehicle covers for motor scooters, motorcycles used to protect against hail damage; Fitted vehicle covers for motorcycles, automobiles, motorized golf carts used to protect against hail damage; Frames for motorcycles; Gas caps for land vehicles; Handle bars for bicycles; Handle bars for motorcycles; Handlebar grips for motorcycles; Hubs for vehicle wheels (motorcycles); Kickstands; Land vehicle parts, namely, windshields; Land vehicle structural parts for motor scooters, motorcycles; License plate holders; Luggage racks for motor cars; Luggage racks for motorcycles; Motorcycle accessories, namely, front and side plates; Motorcycle accessories, namely, gas tank and radiator shrouds; Motorcycle chains; Motorcycle foot pegs; Motorcycle kickstands; Motorcycle seats; Motorcycles; Mudguards; Parts of motorcycles, namely, brake calipers; Parts of motorcycles, namely, brake levers; Parts of motorcycles, namely, brake pedals; Parts of motorcycles, namely, brake rotors; Parts of motorcycles, namely, front dash panels; Parts of motorcycles, namely, handle bar dampers; Parts of motorcycles, namely, handle bar grips; Parts of motorcycles, namely, handle bars; Parts of motorcycles, namely, headlight mounts; Parts of motorcycles, namely, shift levers; Petrol tank caps for motor cars; Rearview mirrors; Sissy bars for motorcycles; Spare tire covers; Spare tyre covers; Spare wheel covers; Spoilers for vehicles; Stands for scooters; Steering brakes; Steering wheels for vehicles; Torsion bars for vehicles; Traction engine; Turn signal levers for vehicles; Upholstery for vehicles; Vehicle windscreens; Vehicles parts, namely, fuel filler pipes being the pipe in which one places a gasoline pump when fueling the vehicle; Wheels” in International Class 12.
Registrant in Registration No. 3182098 has registered the standard character mark TOUGH BED for use in connection with “Liner for truck cargo compartments” in International Class 12.
Registrant in Registration No. 3255512 has registered the standard character mark TOUGH NUTS for use in connection with “Lug nuts for vehicle wheels” in International Class 12.
Registrant in Registration No. 2452369 has registered the special form mark TOUGH SHOCK (with stylized wording) for use in connection with “bicycle, suspension frame for bicycle, suspension fork for bicycle, rear shock for bicycle, frame for bicycle, fork for bicycle” in International Class 12.
Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods of the parties. See 15 U.S.C. §1052(d). Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). Only those factors that are “relevant and of record” need be considered. M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018).
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods, and similarity of the trade channels of the goods. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin's Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.
Similarity of the Marks
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).
Here, applicant’s standard character mark, TOUGH, is confusingly similar to the registered standard character marks TOUGH BED and TOUGH NUTS, and to the registered special form mark TOUGH SHOCK. Specifically, these marks consist in large part or entirely of the term “TOUGH”. Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii). Here, because these marks consist in large part or entirely of the term “TOUGH,” they are similar in terms of sound and appearance.
Not only are the marks similar in terms of sound and appearance, but they are also similar in terms of meaning and overall commercial impression. As the attached screenshot from Lexico.com demonstrates, “TOUGH” means “strong enough to withstand adverse conditions or rough handling.” Therefore, the applied-for mark and the registered marks are very similar in meaning. These marks evoke something strong enough to withstand adverse conditions or rough handling.
Additionally, because the applied-for mark and the marks in Registration Nos. 3182098 and 3255512 are standard character marks, applicant could use its mark in a stylization and font similar or even identical to that of the registrants, which would increase the likelihood of confusion. A mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition. See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii).
Second, when evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)). This is particularly true where, as here, the only design element of the registered mark is the stylization of the wording.
Although the registered marks each contain wording not found in the applied-for mark (specifically, BED, NUTS, and SHOCK, respectively), that fact does not obviate this refusal. Applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s mark. See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)). Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). In this case, applicant’s mark does not create a distinct commercial impression from the registered mark because it contains some of the wording in the registered mark and does not add any wording that would distinguish it from that mark.
Ultimately, when purchasers call for the goods of the applicant and the goods of the registrant using marks that are very similar in sound, appearance and meaning, they are likely to believe that the marks identify a single source of goods. Thus, the marks are confusingly similar.
Relatedness of the Goods
The goods are compared to determine whether they are similar, commercially related, or travel in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).
Relatedness of the applicant’s goods to those identified in Registration No. 3182098
Applicant’s goods are identified as “Aero-dynamic fairings for vehicles; Anti-theft locks for use on automobile steering wheels; Automobile hoods; Automobile windshields; Automobiles; Automotive windshield shade screens; Axle boot kits for use with land vehicles; Bicycle stands; Brake blocks for land vehicles; Brake discs for motorcycles; Brake discs for vehicles; Brake levers for cycles; Brake linings for vehicles; Brake pads for automobiles; Brakes for vehicles; Campers; Chains for motor cars; Clutches for land vehicles; Covers for vehicle steering wheels; Direction signals for vehicles; Directional signals for vehicles; Engine mounts for land vehicles; Fitted car seat covers; Fitted vehicle covers for motorcycles, automobiles, motorized golf carts for the purpose of protecting against harsh weather, shielding from bird droppings; Fitted vehicle covers for motor scooters, motorcycles used to protect against hail damage; Fitted vehicle covers for motorcycles, automobiles, motorized golf carts used to protect against hail damage; Frames for motorcycles; Gas caps for land vehicles; Handle bars for bicycles; Handle bars for motorcycles; Handlebar grips for motorcycles; Hubs for vehicle wheels (motorcycles); Kickstands; Land vehicle parts, namely, windshields; Land vehicle structural parts for motor scooters, motorcycles; License plate holders; Luggage racks for motor cars; Luggage racks for motorcycles; Motorcycle accessories, namely, front and side plates; Motorcycle accessories, namely, gas tank and radiator shrouds; Motorcycle chains; Motorcycle foot pegs; Motorcycle kickstands; Motorcycle seats; Motorcycles; Mudguards; Parts of motorcycles, namely, brake calipers; Parts of motorcycles, namely, brake levers; Parts of motorcycles, namely, brake pedals; Parts of motorcycles, namely, brake rotors; Parts of motorcycles, namely, front dash panels; Parts of motorcycles, namely, handle bar dampers; Parts of motorcycles, namely, handle bar grips; Parts of motorcycles, namely, handle bars; Parts of motorcycles, namely, headlight mounts; Parts of motorcycles, namely, shift levers; Petrol tank caps for motor cars; Rearview mirrors; Sissy bars for motorcycles; Spare tire covers; Spare tyre covers; Spare wheel covers; Spoilers for vehicles; Stands for scooters; Steering brakes; Steering wheels for vehicles; Torsion bars for vehicles; Traction engine; Turn signal levers for vehicles; Upholstery for vehicles; Vehicle windscreens; Vehicles parts, namely, fuel filler pipes being the pipe in which one places a gasoline pump when fueling the vehicle; Wheels” in International Class 12.
Registrant’s goods are identified as “Liner for truck cargo compartments” in International Class 12.
The attached Internet evidence, consisting of screenshots from Parts.Ford.com, NissanUSA.com, Parts.NissanUSA.com, Parts.Toyota.com, and Toyota.com, establishes that the same entity (here, Ford, Nissan, and Toyota) commonly provides the relevant goods (here, on one hand, automobile hoods, automobile windshields, brakes for vehicles, automobiles, and/or brake pads for automobiles, and on the other hand, liners for truck cargo compartments) and markets the goods under the same mark. Thus, applicant’s and registrant’s goods are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
Relatedness of the applicant’s goods to those identified in Registration No. 3255512
Registrant’s goods are identified as “Lug nuts for vehicle wheels” in International Class 12.
The attached Internet evidence, consisting of screenshots from Parts.Ford.com, Parts.NissanUSA.com, NissanUSA.com, Parts.Toyota.com, and Toyota.com, establishes that the same entity (here, Ford, Nissan, and Toyota) commonly provides the relevant goods (here, on one hand, automobile hoods, automobile windshields, brakes for vehicles, automobiles, and/or brake pads for automobiles, and on the other hand, lug nuts for vehicle wheels) and markets the goods under the same mark. Thus, applicant’s and registrant’s goods are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
Relatedness of the applicant’s goods to those identified in Registration No. 2452369
Registrant’s goods are identified as “bicycle, suspension frame for bicycle, suspension fork for bicycle, rear shock for bicycle, frame for bicycle, fork for bicycle” in International Class 12.
The attached Internet evidence, consisting of screenshots from Parts.Ford.com, PedegoElectricBikes.com, SundayBikes.com, Shop.SundayBikes.com, and StateBicycle.com, establishes that the same entity (here, Ford, Sunday, and State Bicycle Co.) commonly provides the relevant goods (here, on one hand, automobile hoods, automobile windshields, brake pads for automobiles, and/or handle bars for bicycles, and on the other hand, bicycles and/or forks for bicycle) and markets the goods under the same mark. Thus, applicant’s and registrant’s goods are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
The refusal applies to all of the applicant’s goods because all of the remaining goods identified by the applicant are similar in nature to those for which evidence has been provided and are generally sold in the same category and under the same mark.
Ultimately, when purchasers encounter the applicant’s goods and the registrant’s goods, they are likely to be confused as to the source of goods by the relationship between them. Thus, the goods are closely related.
Therefore, because the marks are confusingly similar and the goods are closely related, purchasers encountering these goods are likely to believe, mistakenly, that they emanate from a common source. Accordingly, there is a likelihood of confusion and registration is refused pursuant to Section 2(d) of the Trademark Act.
Response to Section 2(d) – Likelihood of Confusion Refusal
Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
PRIOR PENDING APPLICATION
The filing date of pending U.S. Application Serial No. 87743379 precedes applicant’s filing date. See attached referenced application. If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks. See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
While applicant is not required to respond to the issue of the pending application, applicant must respond to the refusal above, the refusal below, and the requirements below within six months of the mailing date of this Office Action to avoid abandonment.
Applicant should note the following additional ground for refusal.
SECTION 2(E)(1) MERE DESCRIPTIVENESS REFUSAL
Registration is refused because the applied-for mark merely describes a feature of applicant’s goods. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.
A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods. TMEP §1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)).
The applied-for mark is “TOUGH” used in connection with “Aero-dynamic fairings for vehicles; Anti-theft locks for use on automobile steering wheels; Automobile hoods; Automobile windshields; Automobiles; Automotive windshield shade screens; Axle boot kits for use with land vehicles; Bicycle stands; Brake blocks for land vehicles; Brake discs for motorcycles; Brake discs for vehicles; Brake levers for cycles; Brake linings for vehicles; Brake pads for automobiles; Brakes for vehicles; Campers; Chains for motor cars; Clutches for land vehicles; Covers for vehicle steering wheels; Direction signals for vehicles; Directional signals for vehicles; Engine mounts for land vehicles; Fitted car seat covers; Fitted vehicle covers for motorcycles, automobiles, motorized golf carts for the purpose of protecting against harsh weather, shielding from bird droppings; Fitted vehicle covers for motor scooters, motorcycles used to protect against hail damage; Fitted vehicle covers for motorcycles, automobiles, motorized golf carts used to protect against hail damage; Frames for motorcycles; Gas caps for land vehicles; Handle bars for bicycles; Handle bars for motorcycles; Handlebar grips for motorcycles; Hubs for vehicle wheels (motorcycles); Kickstands; Land vehicle parts, namely, windshields; Land vehicle structural parts for motor scooters, motorcycles; License plate holders; Luggage racks for motor cars; Luggage racks for motorcycles; Motorcycle accessories, namely, front and side plates; Motorcycle accessories, namely, gas tank and radiator shrouds; Motorcycle chains; Motorcycle foot pegs; Motorcycle kickstands; Motorcycle seats; Motorcycles; Mudguards; Parts of motorcycles, namely, brake calipers; Parts of motorcycles, namely, brake levers; Parts of motorcycles, namely, brake pedals; Parts of motorcycles, namely, brake rotors; Parts of motorcycles, namely, front dash panels; Parts of motorcycles, namely, handle bar dampers; Parts of motorcycles, namely, handle bar grips; Parts of motorcycles, namely, handle bars; Parts of motorcycles, namely, headlight mounts; Parts of motorcycles, namely, shift levers; Petrol tank caps for motor cars; Rearview mirrors; Sissy bars for motorcycles; Spare tire covers; Spare tyre covers; Spare wheel covers; Spoilers for vehicles; Stands for scooters; Steering brakes; Steering wheels for vehicles; Torsion bars for vehicles; Traction engine; Turn signal levers for vehicles; Upholstery for vehicles; Vehicle windscreens; Vehicles parts, namely, fuel filler pipes being the pipe in which one places a gasoline pump when fueling the vehicle; Wheels” in International Class 12.
As the attached screenshot from Lexico.com demonstrates, “TOUGH” means “strong enough to withstand adverse conditions or rough handling.” In the context of applicant’s goods, the mark immediately conveys that they are strong enough to withstand adverse conditions or rough handling.
“Marks that are merely laudatory and descriptive of the alleged merit of a product [or service] are . . . regarded as being descriptive” because “[s]elf-laudatory or puffing marks are regarded as a condensed form of describing the character or quality of the goods [or services].” DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1256, 103 USPQ2d 1753, 1759 (Fed. Cir. 2012) (quoting In re The Boston Beer Co., 198 F.3d 1370, 1373, 53 USPQ2d 1056, 1058 (Fed. Cir. 1999)); see In re Nett Designs, Inc., 236 F.3d 1339, 1342, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (holding THE ULTIMATE BIKE RACK merely laudatory and descriptive of applicant’s bicycle racks being of superior quality); In re The Boston Beer Co., 198 F.3d at 1373-74, 53 USPQ2d at 1058-59 (holding THE BEST BEER IN AMERICA merely laudatory and descriptive of applicant’s beer and ale being of superior quality); TMEP §1209.03(k). In fact, “puffing, if anything, is more likely to render a mark merely descriptive, not less so.” DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d at 1256, 103 USPQ2d at 1759. See also In re Oris LTDA, 2001 TTAB LEXIS 131, *1-23 (TTAB 2001).
Furthermore, the attached screenshots from CloverChevrolet.com, DigitalTrends.com, and CovertFord.com, show that others use the wording “TOUGH” generally to describe vehicle-related goods that are strong enough to withstand adverse conditions or rough handling.
Therefore, as applied to the applicant’s identified goods, the mark “TOUGH” merely describes a feature of applicant’s goods, namely that applicant’s goods are strong enough to withstand adverse conditions or rough handling. Accordingly, the proposed mark is merely descriptive, and registration is refused on the Principal Register under Section 2(e)(1) of the Trademark Act.
SUPPLEMENTAL REGISTER ADVISORY
The applied-for mark has been refused registration on the Principal Register. Applicant may respond to the refusal by submitting evidence and arguments in support of registration and/or by amending the application to seek registration on the Supplemental Register. See 15 U.S.C. §1091; 37 C.F.R. §§2.47, 2.75(a); TMEP §§801.02(b), 816. Amending to the Supplemental Register does not preclude applicant from submitting evidence and arguments against the refusal(s). TMEP §816.04.
REQUIREMENTS
If applicant chooses to respond to the refusal to register, then applicant must also respond to the following requirements:
ADDITIONAL INFORMATION REQUIRED
Due to the descriptive nature of the applied-for mark, applicant must provide the following information and documentation regarding the goods and wording appearing in the mark:
(1) Fact sheets, instruction manuals, brochures, advertisements and pertinent screenshots of applicant’s website as it relates to the goods in the application, including any materials using the terms in the applied-for mark. Merely stating that information about the goods is available on applicant’s website is insufficient to make the information of record.;
(2) If these materials are unavailable, applicant should submit similar documentation for goods of the same type, explaining how its own product will differ. If the goods feature new technology and information regarding competing goods is not available, applicant must provide a detailed factual description of the goods. Factual information about the goods must make clear how they operate, salient features, and prospective customers and channels of trade. Conclusory statements will not satisfy this requirement.; and
(3) Applicant must respond to the following questions:
a. Are applicant’s goods strong enough to withstand adverse conditions or rough handling?
b. Do applicant’s competitors use the term TOUGH to advertise similar goods?
c. Who is the typical consumer of applicant’s goods?
d. Where are applicant’s goods typically purchased (if via online and/or brick-and-mortar store venues, please specify the names of these online and/or brick-and-mortar store venues)?
See 37 C.F.R. §2.61(b); TMEP §§814, 1402.01(e).
Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.
SPECIMEN REFUSAL – NEW SPECIMEN OR AMENDMENT OF FILING BASIS REQUIRED
An image of a product or packaging that has been digitally created or otherwise altered to include the mark does not show actual use of the mark in commerce. See 15 U.S.C. §1127; TMEP §§904.04(a), 904.07(a); cf. In re Chica, Inc., 84 USPQ2d 1845, 1848 (TTAB 2007) (holding that “a mere drawing of the goods with an illustration of how the mark may be displayed” was not an acceptable specimen because it did not show actual use in commerce); In re The Signal Cos., 228 USPQ 956, 957-58 n.4 (TTAB 1986) (noting that a printer’s proof of an advertisement would not be an acceptable specimen because it does not show actual use in commerce). In addition, a photo of the mark on a label, tag, or piece of paper that appears on applicant’s or a third party’s goods or packaging is generally not acceptable to show applicant’s use of the applied-for mark in commerce. See 15 U.S.C. §1127; TMEP §§904.03(a), 904.07(a). Applicant must show the mark on applicant’s own goods or packaging as it is seen by the purchasing public, with goods that have actually been sold or transported in commerce. See TMEP §904.07(a).
In this case, the specimen consists of two pages, each page reflecting one photograph. It appears in each image that the image has been digitally altered to superimpose the applied-for mark onto the goods. The wording hovers over the surface of the goods and does not appear to be actually printed on or otherwise incorporated into the surface of the goods. Additionally, the resolution of the applied-for wording does not correspond to the resolution of the surrounding visual information in the image.
An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods identified in the application. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a). “Use in commerce” means (1) a bona fide use of the applied-for mark in the ordinary course of trade (and not merely to reserve a right in the mark), (2) the mark is placed in any manner on the goods, packaging, tags or labels, or displays of the goods, and (3) the goods are actually sold or transported in commerce. See 15 U.S.C. §1127.
In addition to the examples of specimens in (2) in the above paragraph, examples of specimens for goods also include instruction manuals, containers, and webpages that include a picture or textual description of the goods associated with the mark and the means to order the goods. See TMEP §§904.03 et seq.
Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(1) Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application use and (b) shows the mark in actual use in commerce for the goods identified in the application. A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.” The substitute specimen cannot be accepted without this statement.
(2) Amend the filing basis to intent to use under Section 1(b), for which no specimen is required. This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.
For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, see the Specimen webpage.
INFORMATION ABOUT SPECIMEN REQUIRED
A specimen must show the mark as used in commerce, which means use in the ordinary course of trade (not merely to reserve a right in the mark). 15 U.S.C. §§1051, 1052, 1127. A specimen shows a mark used in commerce for goods only if it shows the mark placed on the goods, packaging, tags or labels affixed to the goods, or displays of the goods, and the goods are actually sold or transported for sale in commerce. 15 U.S.C. §1127. Because the specimen of record appears to be digitally created or altered, or is otherwise a mock-up, it does not appear to show the mark as actually used in commerce. Therefore, to permit proper examination of the application, applicant must submit additional information for the record about the specimen and how the mark as shown in the specimen is in use in commerce with applicant’s goods. See 37 C.F.R. §2.61(b); TMEP §814.
Accordingly, applicant must respond to the following questions and requests for documentation to satisfy this request for information:
(1) How are applicant’s goods sold? Specify the retail, wholesale, or other sales environment in which the goods are sold. Provide the name(s) as well as physical and/or internet addresses of the sales environment(s).
(2) Please provide copies of invoices, bills of sale, or other documentation of sales of the goods.
(3) Was the specimen created for submission with this application?
(4) Does the specimen show applicant’s product as it is currently being sold to consumers?
(5) How do applicant’s goods appear in the actual sales environment? If sold in stores, provide photos showing the goods for sale in the stores. If sold online, identify the websites and provide copies of the webpages showing the goods for sale. And if sold in another type of sales environment, provide photos and/or documentation showing the goods for sale in that environment.
(6) If the information in question (5) about how the goods appear in the actual sales environment is not available to applicant, then please describe how applicant’s goods are transported for sale and provide photos and other documentation showing how applicant’s mark appears on the goods and/or its packaging when the goods are being transported for sale.
See 37 C.F.R. §2.61(b); TMEP §814.
Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814. Merely stating that information is available on applicant’s website is an insufficient response and will not make the relevant information of record. See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).
REPRESENTATIVE SPECIMENS REQUIRED
Given the wide variety and range of unrelated goods that applicant has listed in the application, applicant must submit additional specimens to allow for a complete and accurate examination of the application and assessment of the registrability of the subject mark, in accordance with Rule 2.61(b). 37 C.F.R. §2.61(b); see TMEP §904.01(a).
Applicant should submit specimens demonstrating use of the mark on all of the following goods:
1. Aero-dynamic fairings for vehicles;
2. Anti-theft locks for use on automobile steering wheels;
3. Automobile hoods;
4. Automobile windshields; Land vehicle parts, namely, windshields; Vehicle windscreens;
5. Automobiles;
6. Automotive windshield shade screens;
7. Axle boot kits for use with land vehicles;
8. Bicycle stands;
9. Brake blocks for land vehicles; Brake discs for motorcycles; Brake discs for vehicles;
Brake levers for cycles; Brake linings for vehicles; Brake pads for automobiles; Brakes for vehicles; Parts of motorcycles, namely, brake calipers; Parts of motorcycles, namely, brake levers; Parts of motorcycles, namely, brake pedals; Parts of motorcycles, namely, brake rotors; Steering brakes;
10. Campers;
11. Chains for motor cars;
12. Clutches for land vehicles;
13. Covers for vehicle steering wheels;
14. Direction signals for vehicles; Directional signals for vehicles;
15. Engine mounts for land vehicles;
16. Fitted car seat covers;
17. Fitted vehicle covers for motorcycles, automobiles, motorized golf carts for the purpose of
protecting against harsh weather, shielding from bird droppings; Fitted vehicle covers for motor scooters, motorcycles used to protect against hail damage; Fitted vehicle covers for motorcycles, automobiles, motorized golf carts used to protect against hail damage;
18. Frames for motorcycles;
19. Gas caps for land vehicles; Petrol tank caps for motor cars;
20. Handle bars for bicycles; Handle bars for motorcycles; Handlebar grips for motorcycles;
Parts of motorcycles, namely, handle bar grips; Parts of motorcycles, namely, handle bars;
21. Hubs for vehicle wheels (motorcycles);
22. Kickstands; Motorcycle kickstands;
23. Land vehicle structural parts for motor scooters, motorcycles;
24. License plate holders;
25. Luggage racks for motor cars; Luggage racks for motorcycles;
26. Motorcycle accessories, namely, front and side plates;
27. Motorcycle accessories, namely, gas tank and radiator shrouds;
28. Motorcycle chains;
29. Motorcycle foot pegs;
30. Motorcycle seats;
31. Motorcycles;
32. Mudguards;
33. Parts of motorcycles, namely, front dash panels;
34. Parts of motorcycles, namely, handle bar dampers;
35. Parts of motorcycles, namely, headlight mounts;
36. Parts of motorcycles, namely, shift levers;
37. Rearview mirrors;
38. Sissy bars for motorcycles;
39. Spare tire covers; Spare tyre covers;
40. Spare wheel covers;
41. Spoilers for vehicles;
42. Stands for scooters;
43. Steering wheels for vehicles;
44. Torsion bars for vehicles;
45. Traction engine;
46. Turn signal levers for vehicles;
47. Upholstery for vehicles;
48. Vehicles parts, namely, fuel filler pipes being the pipe in which one places a gasoline pump
when fueling the vehicle; and
49. Wheels
For each specimen submitted, applicant must clearly provide the common commercial name for the goods to which such specimen relates in order to permit proper examination of the specimens. These specimens should be supported by a declaration.
If applicant submits images from Amazon.com, then in any additional specimen(s), applicant must include in such screenshots the “Date first listed on Amazon” or “Date First Available” information including the actual date when such goods were first listed and/or available on Amazon.com.
If applicant is unable to provide specimens to support use of these items, applicant must delete these entries, or amend the filing basis for those goods that were not in proper use as of the application filing date to an intent to use basis under Section 1(b). This option will later necessitate additional fees and filing requirements such as providing a specimen for these goods at a subsequent date.
Failure to comply with a requirement to furnish additional specimens is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814. Merely stating that evidence is available on applicant’s or a third party website or providing a hyperlink of such a website is an insufficient response and will not make the additional specimens of record. See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).
AMENDMENT OF IDENTIFICATION OF GOODS REQUIRED
Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the description of the goods.
Specific guidance for all requirements has been provided below.
Applicant may adopt the following wording, if accurate:
Class 12 – Aero-dynamic fairings for vehicles; Anti-theft locks for use on automobile steering wheels;
Automobile hoods; Automobile windshields; Automobiles; Automotive windshield shade screens; Axle boot kits for use with land vehicles; Bicycle stands; Brake blocks for land vehicles; Brake discs for
motorcycles; Brake discs for vehicles; Brake levers for cycles; Brake linings for vehicles; Brake pads for automobiles; Brakes for vehicles; Campers; Chains for motor cars; Clutches for land
vehicles; Covers for vehicle steering wheels; Direction signals for vehicles; Directional signals for vehicles; Engine mounts for land vehicles; Fitted car seat covers; Fitted vehicle covers for
motorcycles, automobiles, and motorized golf carts for the purpose of protecting against harsh weather, shielding from bird droppings; Fitted vehicle covers for motor
scooters, and motorcycles used to protect against hail damage; Fitted vehicle covers for motorcycles, automobiles, and motorized golf carts used to
protect against hail damage; Frames for motorcycles; Gas caps for land vehicles; Handle bars for bicycles; Handle bars for motorcycles; Handlebar grips for motorcycles; Hubs for vehicle wheels
in the nature of {incorporate parenthetical language, e.g., hubs for (motorcycles) wheels}; Kickstands; Land vehicle parts, namely,
windshields; Land vehicle structural parts for motor scooters, and motorcycles; License plate holders; Luggage racks for motor cars; Luggage racks for motorcycles;
Motorcycle accessories, namely, front and side plates; Motorcycle accessories, namely, gas tank and radiator shrouds; Motorcycle chains; Motorcycle foot pegs; Motorcycle kickstands; Motorcycle seats;
Motorcycles; Mudguards; Parts of motorcycles, namely, brake calipers; Parts of motorcycles, namely, brake levers; Parts of motorcycles, namely, brake pedals; Parts of motorcycles, namely, brake
rotors; Parts of motorcycles, namely, front dash panels; Parts of motorcycles, namely, handle bar dampers; Parts of motorcycles, namely, handle bar grips; Parts of motorcycles, namely, handle bars;
Parts of motorcycles, namely, headlight mounts; Parts of motorcycles, namely, shift levers; Petrol tank caps for motor cars; Rearview mirrors; Sissy bars for motorcycles; Spare tire covers; Spare
tyre covers; Spare wheel covers; Spoilers for vehicles; Stands for scooters; Steering brakes; Steering wheels for vehicles; Torsion bars for vehicles; Traction engine; Turn signal levers for
vehicles; Upholstery for vehicles; Vehicle windscreens; Vehicles parts, namely, fuel filler pipes being the pipe in which one places a gasoline pump when fueling the vehicle; Wheels
Stylized wording indicates changes.
These suggestions are merely illustrative, not exhaustive of all the types of goods and proper classifications thereof which applicant might have intended to identify. These suggestions are based upon the examining attorney’s review of the application and determination of some of the goods applicant is most likely to offer. If applicant intended to identify goods other than those suggested above, applicant must so specify and classify these goods accordingly.
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
SIGNATURE/SUBMISSION CONSTITUTES CERTIFICATION UNDER 37 C.F.R. §11.18(B) – ADVISORY
Any party who presents a document to the USPTO is subject to 37 C.F.R. §11.18(b). Thus, an attorney, applicant, or other party who signs or submits a document in connection with a trademark application is certifying that:
(1) All statements made in the document of the party’s own knowledge are true, all statements made on information and belief are believed to be true, and all statements made are made with the knowledge that, in any matter within the jurisdiction of the USPTO, any party who knowingly and willfully makes any false, fictitious, or fraudulent statements or representations, is subject to the penalties under 18 U.S.C. §1001, including fines and imprisonment;
(2) To the best of the party’s knowledge, information and belief, formed after an inquiry reasonable under the circumstances, the document is not being presented for any improper purpose;
(3) All allegations or other factual contentions in the document have evidentiary support or are likely to have evidentiary support after a reasonable opportunity for further investigation or discovery; and
(4) All denials of factual contentions in the document are warranted on the evidence or are reasonably based on a lack of information or belief.
See 37 C.F.R. §11.18(b); TMEP §§302, 611.01(a).
Violating 37 C.F.R. §11.18(b) may jeopardize the validity of an application and any resulting registration, and may lead the USPTO to impose sanctions and/or take other appropriate actions under 37 C.F.R. §11.18(c), which may include the following: rejecting the relevant document or according it less probative value; referring the practitioner’s conduct to the USPTO’s Office of Enrollment and Discipline for possible disciplinary action; excluding the practitioner or other party from practicing before, or otherwise submitting documents to, the USPTO; and requiring a party to be represented by a qualified practitioner in any current or future trademark matters before the USPTO.
APPLICANT MAY WISH TO SEEK TRADEMARK COUNSEL
Because of the legal technicalities and strict deadlines involved in the USPTO application process, applicant may wish to hire a private attorney specializing in trademark matters to represent applicant in this process and provide legal advice. Although the undersigned trademark examining attorney is permitted to help an applicant understand the contents of an Office action as well as the application process in general, no USPTO attorney or staff is permitted to give an applicant legal advice or statements about an applicant’s legal rights. TMEP §§705.02, 709.06.
For attorney referral information, applicant may consult the American Bar Association’s Consumers’ Guide to Legal Help; an online directory of legal professionals, such as FindLaw®; or a local telephone directory. The USPTO, however, may not assist an applicant in the selection of a private attorney. 37 C.F.R. §2.11.
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.
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.
To expedite prosecution of the application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/trademarks/teas/index.jsp. If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/trademarks/teas/e_filing_tips.jsp and e-mail technical questions to TEAS@uspto.gov.
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
/Dana Dickson/
Examining Attorney
Law Office 113
(571) 270-7552
dana.dickson@uspto.gov
RESPONSE GUIDANCE
