To: | CPTN APPAREL COMPANY LLC (jank@jklegalservices.com) |
Subject: | U.S. Trademark Application Serial No. 88449665 - LEAVE NO TRACE - CPTN008 |
Sent: | November 08, 2019 02:50:45 PM |
Sent As: | ecom114@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88449665
Mark: LEAVE NO TRACE
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Correspondence Address: 937 S. COAST HIGHWAY, SUITE C202
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Applicant: CPTN APPAREL COMPANY LLC
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Reference/Docket No. CPTN008
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) 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: November 08, 2019
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.
This Final Action addresses applicant’s response of October 18, 2019. The refusal to register pursuant to Sections 1, 2, and 45 – Merely Informational Matter is made FINAL for the reasons set forth below.
SECTIONS 1, 2, and 45 REFUSAL – FINAL REFUSAL – INFORMATIONAL MATTER
Registration is refused because the applied-for mark is a slogan or term that does not function as a trademark or service mark to indicate the source of applicant’s goods and/or services 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 an informational social, political, religious, or similar kind of message that merely conveys support of, admiration for, or affiliation with the ideals conveyed by the message. See In re Hulting, 107 USPQ2d 1175, 1177-79 (TTAB 2013) (holding NO MORE RINOS!, a slogan meaning “No More Republicans In Name Only,” not registrable for a variety of paper items, shirts, and novelty buttons because the mark would be perceived merely as a commonly used political message); In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229-31 (TTAB 2010) (holding ONCE A MARINE, ALWAYS A MARINE not registrable for clothing items because the mark would be perceived merely as an old and familiar military expression); TMEP §1202.04(b).
Terms and phrases that merely convey an informational message are not registrable. See In re Eagle Crest, Inc., 96 USPQ2d at 1229. Determining whether a term or phrase 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 phrase] 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 at 1177 (quoting In re Eagle Crest, Inc., 96 USPQ2d at 1229); TMEP §1202.04(b).
The evidence attached to the Initial Office Action from a variety of Internet sources shows that this term or expression is commonly used to refer to various principles for remote backcountry and front-country users. Because consumers are accustomed to seeing this term or 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 and/or services but rather as only conveying an informational message. Also see evidence attached to this Final Action. For example, ADIRONDACK notes that “The Leave No Trace Seven Principles are a code of ethics based on conserving the outdoors from the Center for Outdoor Ethics.”
In response, applicant argues that the proposed mark “is not informational in nature as it relates to the goods but rather is informational in nature with respect to how one should consider their impact on the environment.” However, that is essentially the reason for the refusal. A Sections 1, 2, and 45 refusal does not require an analysis of whether the mark is informational with respect to a specific good. Rather, the sole issue is whether the mark (regardless of what it is displayed on) conveys an informational message that is widely recognized or used. In this case, the evidence establishes just that.
Finally, 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)).
Accordingly, the refusal to register is made FINAL. 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).
How to respond. Click to file a response to this final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB)
/Siddharth Jagannathan/
Siddharth Jagannathan
Trademark Examining Attorney
USPTO, Law Office 114
571-272-6563 (phone)
Siddharth.Jagannathan@uspto.gov
RESPONSE GUIDANCE