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:  August 23, 2019

Introduction

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.

The present Office action issues, because the Examining Attorney’s signature block was not included with the previous Nonfinal Office Action issued today, August 23, 2019.  There are no other changes to the letter.  The examining attorney apologizes for any confusion.

Search Results

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

Advisory: Summary of Issues

1.      Refusal: Merely Descriptive – Section 2(e)(1)

2.      Requirement for More Information

3.      Requirement: U.S. Licensed Attorney Bar Information

4.      Requirement: U.S. Licensed Attorney Attestation

5.      Advisory: Response Guidelines

Refusal: Merely Descriptive – Section 2(e)(1)

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 determination of whether a mark is merely descriptive is made in relation to an applicant’s goods and/or services, not in the abstract.  DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012); In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); TMEP §1209.01(b); see, e.g., In re Polo Int’l Inc., 51 USPQ2d 1061, 1062-63 (TTAB 1999) (finding DOC in DOC-CONTROL would refer to the “documents” managed by applicant’s software rather than the term “doctor” shown in a dictionary definition); In re Digital Research Inc., 4 USPQ2d 1242, 1243-44 (TTAB 1987) (finding CONCURRENT PC-DOS and CONCURRENT DOS merely descriptive of “computer programs recorded on disk” where the relevant trade used the denomination “concurrent” as a descriptor of a particular type of operating system). 

“Whether consumers could guess what the product [or service] is from consideration of the mark alone is not the test.”  In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).

Here, applicant’s mark is LETTERMARK for “Copy paper, printing paper, writing paper, recycled paper for printing, colored printing paper, punched and perforated paper” in Class 016. 

Specifically, the attached evidence Internet websites from makers, sellers and commentators about stationery shows this wording means, “A lettermark is a typography-based logo that's comprised of a few letters, usually a company's initials. It uses text to create a unique typographic mark. Similar to a lettermark, a wordmark logo is a font-based logo that focuses on a business’ name alone.” http://bashooka.com/inspiration/40-creative-lettermark-wordmark-logo-designs/ (emphasis in the original).  Therefore, the wording merely describes a feature of applicant’s printed writing paper, e.g. a purchaser may wish to purchase its writing paper featuring its own lettermark.

The trademark examining attorney refers to the attached Internet website excerpts in which LETTERMARK is used in reference to “copy paper, printing paper, writing paper, recycled paper for printing, colored printing paper, punched and perforated paper.”  See attachments. 

http://www.designbolts.com/2016/07/27/difference-between-wordmark-lettermark-brandmark/

http://www.brandcrowd.com/maker/tag/lettermark

http://99designs.com/blog/tips/types-of-logos/

http://www.jessicajonesdesign.com/types-of-logos/

http://uwf.edu/brand/logo-basics/uwf-lettermark/

Therefore, LETTERMARK describes a feature of applicant’s goods.  Accordingly, the examining attorney refuses registration of the mark as merely descriptive under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1). 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.

If applicant responds to the refusal, applicant must also respond to the requirements set forth below.

Requirement for More Information

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 and services of the same type, explaining how its own product or services 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.  For services, the factual information must make clear what the services are and how they are rendered, 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: 

1.      Do applicant’s paper goods feature lettermarks or letter marks? 

2.      Do applicant’s paper goods feature logos that are comprised of a few letters?

3.      Do applicant’s paper goods feature logos that are comprised of a company's initials?

4.      Do applicant’s competitors use lettermarks or letter marks to advertise similar goods? 

5.      Who is the typical consumer of applicant’s goods? 

6.      Where are applicant’s goods typically purchased, e.g. online 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. 

U.S. Licensed Attorney: Attorney Bar Information

Attorney bar information required.  Applicant’s attorney must provide the following bar information:  (1) his or her bar membership number, if the bar provides one; (2) the name of the U.S. state, commonwealth, or territory of his or her bar membership; and (3) the year of his or her admission to the bar.  37 C.F.R. §2.17(b)(3).  This information is required for all U.S.-licensed attorneys who are representing trademark applicants at the USPTO.  Id.  If the attorney’s bar does not issue bar membership numbers, applicant must state this for the record.  See id.

U.S. Licensed Attorney: Attorney Attestation

Attorney attestation required.  Applicant’s attorney must provide the following statement:  “I attest that I am an attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory).”  See 37 C.F.R. §2.17(b)(3).  This is required for all U.S.-licensed attorneys who are representing trademark applicants at the USPTO.  Id. 

Advisory: Response Guidelines

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  

/Gilbert M. Swift/

Trademark Examining Attorney

Law Office 109

Tel. 1+(571) 272-9028

Gilbert.Swift@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 August 23, 2019 for

U.S. Trademark Application Serial No. 88452421

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. 

/Gilbert M. Swift/

Trademark Examining Attorney

Law Office 109

Tel. 1+(571) 272-9028

Gilbert.Swift@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 August 23, 2019, 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.”