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:  February 01, 2020

 

 

Introduction

 

This Office action is in response to applicant’s communication filed on 12/30/2019.

 

In a previous Office action dated 09/13/2019, the trademark examining attorney refused registration of the applied-for mark based on the following:  Section 2(e)(1) for being merely descriptive and failure to show the applied-for mark in use in commerce with any of the specified services.

 

Based on applicant’s response, the following refusal(s) have been obviated:  failure to show the applied-for mark in use in commerce.  See TMEP §§713.02, 714.04. 

 

The trademark examining attorney now maintains and continues or addresses new refusal(s) and/or requirement(s) in the summary of issues below. 

 

Summary of Issues:

 

• Maintained and Continued:  Section 2(e)(1) Refusal – Merely Descriptive
• NEW ISSUE:  Insufficient Section 2(f) Claim

 

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

 

Registration remains refused because the applied-for mark merely describes a characteristic, purpose, or function 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.

 

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods and/or services. 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)).

 

Applicant has applied for the mark TOW in standard characters for use in connection with the following services in International Class 39: “bulk liquid and compressible gas transportation services”.

 

The definition attached to the 09/13/2019 Office action from merriam-webster.com defines “TOW” as “to draw or pull along behind”. Additionally, the evidence attached to the 09/13/2019 Office action from kirbycorp.com, settoontowing.com, southerntowing.net, and reinauer.com shows that “TOW” is commonly used in connection with similar services to refer to a mode of transportation. Therefore, “TOW” is descriptive of applicant’s services. Specifically, applicant’s transportation services can involve goods being transported by being drawn or pulled behind a vehicle or vessel.

 

Therefore, the mark is merely descriptive and the refusal to register the applied-for mark pursuant to Section 2(e)(1) of the Trademark Act is maintained and continued.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

Insufficient Section 2(f) Claim

 

Applicant asserted a claim of acquired distinctiveness under Trademark Act Section 2(f) based on applicant’s evidence of record.  See 15 U.S.C. §1052(f).  However, this evidence is insufficient to show acquired distinctiveness because, as the previously attached evidence demonstrates, the applied-for mark is descriptive of applicant’s services.  See In re MetPath Inc., 1 USPQ2d 1750, 1751-52 (TTAB 1986); TMEP §1212.06.  Applicant may respond by providing additional evidence of acquired distinctiveness.

 

In the present case, applicant’s evidence consists of the following:  slides from a presentation, a document explaining applicant’s services, and a claim that applicant has been using the applied-for mark to identify its services for over 20 years.  This evidence is insufficient to show acquired distinctiveness of the applied-for mark because the evidence provided in the 12/30/2019 Response seems to be explanatory in nature rather than advertising material showing widespread use or length of use.  Additionally, applicant did not provide any declarations or affidavits, advertising expenditures, or any other evidence of acquired distinctiveness.

 

An applicant bears the burden of proving that a mark has acquired distinctiveness under Trademark Act Section 2(f).  In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 1335, 116 USPQ2d 1262, 1264 (Fed. Cir. 2015) (citing In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1422 (Fed. Cir. 2005)); TMEP §1212.01.  “To show that a mark has acquired distinctiveness, an applicant must demonstrate that the relevant public understands the primary significance of the mark as identifying the source of a product or service rather than the product or service itself.”  In re Steelbuilding.com, 415 F.3d at 1297, 75 USPQ2d at 1422. 

 

To support the claim of acquired distinctiveness, applicant may respond by submitting additional evidence.  See TMEP §1212.02(g).  Such evidence may include “advertising expenditures, sales success, length and exclusivity of use, unsolicited media coverage, and consumer studies (linking the name to a source).”  In re Change Wind Corp., 123 USPQ2d 1453, 1467 (TTAB 2017) (quoting In re Steelbuilding.com, 415 F.3d 1293, 1300, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005)).  A showing of acquired distinctiveness need not consider all of these types of evidence; no single factor is determinative.  In re Steelbuilding.com, 415 F.3d at 1300, 75 USPQ2d at 1424; see TMEP §§1212.06 et seq.  Rather, the determination involves assessing all of the circumstances involving the use of the mark.  See In re Steelbuilding.com, 415 F.3d at 1300, 75 USPQ2d at 1424 (citing Thompson Med. Co., Inc. v. Pfizer Inc., 753 F.2d 208, 217, 225 USPQ2d 124, 131-32 (Fed. Cir. 1985)).

 

Three types of evidence may be used to establish a claim of acquired distinctiveness under Trademark Act Section 2(f):

 

(1)        Prior Registrations:  A claim of ownership of one or more active prior registrations on the Principal Register of the same mark for goods and/or services that are sufficiently similar to those named in the pending application.  37 C.F.R. §2.41(a)(1); see TMEP §§1212.04 et seq.;

 

(2)        Five Years’ Use:  A verified statement that the mark has become distinctive of applicant’s goods and/or services through the applicant’s substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for the five years before the date when the claim of distinctiveness is made.  37 C.F.R. §2.41(a)(2); see TMEP §§1212.05 et seq.; or

 

(3)        Other Evidence:  Such evidence may include “advertising expenditures, sales success, length and exclusivity of use, unsolicited media coverage, and consumer studies (linking the name to a source).”  In re Change Wind Corp., 123 USPQ2d 1453, 1467 (TTAB 2017) (quoting In re Steelbuilding.com, 415 F.3d 1293, 1300, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005)).  “The evidence must relate to the promotion and recognition of the specific configuration embodied in the applied-for mark and not to the goods in general.”  In re Change Wind Corp., 123 USPQ2d at 1467 (citing Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 851 n.11, 214 USPQ 1, 4 n.11 (1982)). 

 

TMEP §1212; see 15 U.S.C. §1052(f); 37 C.F.R. §2.41(a).

 

Applicant may provide one or any combination of these types of evidence.  TMEP §1212.  Depending on the nature of the mark and the facts in the record, however, a claim of ownership of a prior registration or a claim of five years’ substantially exclusive and continuous use in commerce may be insufficient to establish a prima facie case of acquired distinctiveness.  TMEP §1212; see TMEP §§1212.01, 1212.04(a), 1212.05(a).  Other actual evidence of acquired distinctiveness may be provided regardless of the length of time the mark has been used.  TMEP §1212.01; see Ex parte Fox River Paper Corp., 99 USPQ 173, 173-74 (Comm’r Pats. 1953).

 

Applicant may also respond to the refusal by arguing in support of registration and/or amending the application to seek registration on the Supplemental Register.  See 15 U.S.C. §1091(a); 37 C.F.R. §§2.47, 2.75(a); TMEP §§801.02(b), 816.  If applicant amends the application to the Supplemental Register, applicant is not precluded from submitting evidence and arguments against this refusal.  TMEP §816.04.

 

Response Options

 

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.  

 

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. 

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

 

/Shelby Niemann/

Shelby Niemann

Trademark Examining Attorney

Law Office 125

(571) 270-7330

shelby.niemann@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 February 01, 2020 for

U.S. Trademark Application Serial No. 88461903

 

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. 

 

 

/Shelby Niemann/

Shelby Niemann

Trademark Examining Attorney

Law Office 125

(571) 270-7330

shelby.niemann@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 February 01, 2020, 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.”