| To: | Stefan Vaubel (tm@lzlegalservices.com) |
| Subject: | U.S. Trademark Application Serial No. 88453571 - CLASS SPACE - L532195258 |
| Sent: | August 24, 2019 01:26:05 PM |
| Sent As: | ecom120@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 |
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. 88453571
Mark: CLASS SPACE
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Correspondence Address: PAM DEITCHLE, CA BAR MEMBER REG. NO. 222 LEGALZOOM LEGAL SERVICES, LTD. 101 N. BRAND BLVD., 11TH FLOOR
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Applicant: Stefan Vaubel
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Reference/Docket No. L532195258
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.
SUMMARY OF ISSUES APPLICANT MUST ADDRESS
· Refusal: Section 2(e)(1) of the Trademark Act bars registration of a mark that is merely descriptive of an applicant’s goods or services
o Advisory: The Supplemental Register is available for marks with a 1(a) filing basis
SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
Applicant’s mark is merely descriptive of its services
Registration is refused because the applied-for mark merely describes the purpose, function and feature of applicant’s services. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.
Section 2(e)(1) Refusals
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).
“A mark may be merely descriptive even if it does not describe the ‘full scope and extent’ of the applicant’s goods or services.” In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004) (citing In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1346, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001TMEP §1209.01(b). It is enough if a mark describes only one significant function, attribute, or )); property. 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 In re Oppedahl & Larson LLP, 373 F.3d at 1173, 71 USPQ2d at 1371.
“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).
Applicant has indicated that it is offering the following services under its mark:
International Class 035: Advertising on the internet for others
International Class 041: Providing facilities for educational training, classes, workshops, and seminars
International Class 042: Providing a website featuring on-line non-downloadable software that enables users to manage their space rentals for events, control and manage their sales pipeline, manage communication with their clients, manage and collect payments for their rents
International Class 043: Rental of meeting rooms
Applicant’s specimen of record indicates that its services are all centered around the temporary use of a facility for educators to conduct lessons. As the attached evidence shows, a “class” is commonly understood to refer to a group of students who are taught together, or a period of time during which a group of students is taught together. (see attached definition) As such, “CLASS” is highly descriptive of Applicant’s services, which provide educators the ability to advertise, create, house, and teach classes. Further, a “space” is a similarly highly descriptive term in this context, as it is commonly used to refer to an area rented or sold as business premises. (see attached definition)
Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the goods and/or services is the combined mark registrable. See In re Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968); In re Positec Grp. Ltd., 108 USPQ2d 1161, 1162-63 (TTAB 2013).
In this case, both the individual components and the composite result are descriptive of applicant’s goods and/or services and do not create a unique, incongruous, or nondescriptive meaning in relation to the goods and/or services. Specifically, “CLASS SPACE” is descriptive of an area rented to others for use in the teaching of a group of students. As this term is descriptive of the purpose and feature of Applicant’s services, registration must be refused.
The design appearing in Applicant’s mark is composed of common geometric shapes
Background designs in composite marks consisting of common geometric shapes, such as circles, ovals, squares, triangles, diamonds, and other geometric designs, are generally not regarded as marks for services absent a showing of distinctiveness in the design alone. In re Anton/Bauer Inc., 7 USPQ2d 1380, 1381 (TTAB 1988) (citing In re Raytheon Co., 202 USPQ 317 (TTAB 1979)); TMEP §1202.11; see also Seabrook Foods, Inc. v. Bar-Well Foods Ltd., 568 F.2d 1342, 1344, 196 USPQ 289, 291 (C.C.P.A. 1977). Benetton, 48 USPQ2d at 1217 (holding green rectangular background design not inherently distinctive; evidence of acquired distinctiveness insufficient); Anton/Bauer, 7 USPQ2d at 1383 (holding parallelogram designs used as background for word marks not inherently distinctive; evidence of record insufficient to establish acquired distinctiveness pursuant to §2(f)); In re Kerr-McGee Corp., 190 USPQ 204, 207 (TTAB 1976) (affirming refusals to register escutcheon design used as a frame or border for words, under §2(f)). An applicant may respond to a refusal to register an application for a common geometric shape or background design by submitting evidence that the subject matter has acquired distinctiveness under §2(f) of the Trademark Act, 15 U.S.C. §1052(f). The examining attorney should scrutinize any submission that asserts distinctiveness solely on the basis of a statement of substantially exclusive and continuous use for five years to determine whether it truly establishes that the subject matter is perceived as a trademark by the purchasing public. The examining attorney may continue to refuse registration if he or she believes that the applicant’s assertion does not establish that the matter is perceived as a trademark.
Refusal
No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it . . . (e) Consists of a mark which, (1) when used on or in connection with the goods of the applicant is merely descriptive. See TMEP 1209. The major reasons for not protecting such marks are: (1) to prevent the owner of a mark from inhibiting competition in the sale of particular goods; and (2) to maintain freedom of the public to use the language involved, thus avoiding the possibility of harassing infringement suits by the registrant against others who use the mark when advertising or describing their own products.
Amending to the Supplemental Register
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
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Although registration on the Supplemental Register does not afford all the benefits of registration on the Principal Register, it does provide the following advantages to the registrant:
(1) Use of the registration symbol ® with the registered mark in connection with the designated goods and/or services, which provides public notice of the registration and potentially deters third parties from using confusingly similar marks.
(2) Inclusion of the registered mark in the USPTO’s database of registered and pending marks, which will (a) make it easier for third parties to find it in trademark search reports, (b) provide public notice of the registration, and thus (c) potentially deter third parties from using confusingly similar marks.
(3) Use of the registration by a USPTO trademark examining attorney as a bar to registering confusingly similar marks in applications filed by third parties.
(4) Use of the registration as a basis to bring suit for trademark infringement in federal court, which, although more costly than state court, means judges with more trademark experience, often faster adjudications, and the opportunity to seek an injunction, actual damages, and attorneys’ fees and costs.
(5) Use of the registration as a filing basis for a trademark application for registration in certain foreign countries, in accordance with international treaties.
See 15 U.S.C. §§1052(d), 1091, 1094; J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition §§19:33, 19:37 (rev. 4th ed. Supp. 2017).
Responding to this Office Action
If the applicant has any questions or requires assistance in responding to this Office Action, please telephone the assigned examining attorney.
/Aaron Rosenthal/
Examining Attorney
Law Office 120
Telephone: 571-272-4625
Email: Aaron.Rosenthal@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
RESPONSE GUIDANCE
