To: | PAX Labs, Inc. (PAXdocketing@kelly-ip.com) |
Subject: | U.S. Trademark Application Serial No. 88446316 - ERA PRO - 310.0051 |
Sent: | February 19, 2020 08:31:59 PM |
Sent As: | ecom121@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88446316
Mark: ERA PRO
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Correspondence Address: |
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Applicant: PAX Labs, Inc.
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Reference/Docket No. 310.0051
Correspondence Email Address: |
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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 19, 2020
This Office action is in response to applicant’s communication filed on February 19, 2020.
In a previous Office action dated August 19, 2019, the applicant was required to satisfy the following requirements: Amend the identification of goods; disclaim descriptive wording in the mark.
Based on applicant’s response, the trademark examining attorney notes that the following requirements has been satisfied: Definite amended identification provided. See TMEP §§713.02, 714.04.
Further, the trademark examining attorney maintains and now makes FINAL the requirement in the summary of issues below. See 37 C.F.R. §2.63(b); TMEP §714.04.
SUMMARY OF ISSUES MADE FINAL that applicant must address:
DISCLAIMER REQUIRED
The previously attached evidence from www.lexico.com shows this wording means “professional” – that is, the goods are of a “professional” caliber or are an advanced line of goods. Thus, the wording merely describes a feature or aspect of applicant’s goods.
Applicant argues that this evidence is insufficient to support a finding of descriptiveness – the trademark examining attorney disagrees. In applicant’s argument that the wording represents a double entendre, applicant acknowledges and supports the argument that the wording designates goods of a higher or more advanced caliber. This is the essence of the descriptive nature of the wording.
Applicant additionally argues that the register contains marks for similar goods that do not have the wording “PRO” disclaimed. The fact that third-party registrations exist for marks allegedly similar to applicant’s mark is not conclusive on the issue of descriptiveness. See In re Scholastic Testing Serv., Inc., 196 USPQ 517, 519 (TTAB 1977); TMEP §1209.03(a). An applied-for mark that is merely descriptive does not become registrable simply because other seemingly similar marks appear on the register. In re Scholastic Testing Serv., Inc., 196 USPQ at 519; TMEP §1209.03(a).
It is well settled that each case must be decided on its own facts and the Trademark Trial and Appeal Board is not bound by prior decisions involving different records. See In re Nett Designs, Inc., 236 F.3d 1339, 1342, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001); In re Datapipe, Inc., 111 USPQ2d 1330, 1336 (TTAB 2014); TMEP §1209.03(a). The question of whether a mark or word is merely descriptive is determined based on the evidence of record at the time each registration is sought. In re Virtual Indep. Paralegals, LLC, 2019 USPQ2d 111512, at *9 (TTAB 2019) (citing In re Nett Designs, Inc., 236 F.3d at 1342, 57 USPQ2d at 1566); TMEP §1209.03(a).
As already noted, applicant as acknowledged that the wording “PRO” means that applicant’s products have “features that are specialized, sophisticated, high-tech, innovative, and high quality, but also that it’s ERA PRO products have certain advantageous or positive features when compared to applicant’s ERA products.” Applicant argues this is suggestive, but there is little that could be more descriptive in nature, especially when marketed to consumers. In fact, applicant’s own website touts and advertises these advantages. See attached evidence from http://pax.com.
Thus, the wording “PRO” is descriptive as used with applicant’s goods and must be disclaimed.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “PRO” apart from the mark as shown.
For an overview of disclaimers and instructions on how to provide one using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
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).
/Jason R. Nehmer/
Trademark Examining Attorney
Law Office 121
(571) 270-5303
jason.nehmer@uspto.gov
RESPONSE GUIDANCE