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:  January 27, 2020

 

INTRODUCTION

 

This Office action is supplemental to and supersedes the previous Office action issued on September 6, 2019 in connection with this application. Based on information and/or documentation in applicant’s response, the trademark examining attorney now issues the following new refusal:  Section 2(e)(1) for the mark being deceptively misdescriptive of applicant’s goods.  See TMEP §§706, 711.02. 

 

In a previous Office action dated September 6, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following:  Trademark Act Section 2(e)(1) for the mark being merely descriptive of applicant’s goods. In addition, applicant was required to satisfy the following requirements: provide information about the goods and amend the identification of goods.

 

Based on applicant’s response, the trademark examining attorney notes that the following requirement has been satisfied:  provide information about the goods.  See TMEP §713.02. 

 

In addition, the following refusal has been withdrawn:  Trademark Act Section 2(e)(1) Refusal for the mark being merely descriptive of applicant’s goods.  See id. 

 

The following is a SUMMARY OF ISSUES that applicant must address:

 

• New Issue: Section 2(e)(1) Refusal – Deceptively Misdescriptive
• Identification of the Goods Requirement
• Trademark Attorney Advisory

 

Applicant must respond to all issues raised in this Office action and the previous September 6, 2019 Office action, within six (6) months of the date of issuance of this Office action. 37 C.F.R. §2.62(a); see TMEP §711.02.  If applicant does not respond within this time limit, the application will be abandoned.  37 C.F.R. §2.65(a).

 

SECTION 2(E)(1) REFUSAL – DECEPTIVELY MISDESCRIPTIVE

 

Registration is refused because the applied-for mark is deceptively misdescriptive of applicant’s goods. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see In re Hinton, 116 USPQ2d 1051, 1051-52 (TTAB 2015) (holding THCTea deceptively misdescriptive of tea-based beverages not containing THC); In re Schniberg, 79 USPQ2d 1309, 1312 (TTAB 2006) (holding SEPTEMBER 11, 2001 deceptively misdescriptive of history books and entertainment services not pertaining to the events of September 11, 2001); TMEP §1209.04.

 

The test for determining whether a mark is deceptively misdescriptive has two parts:  (1) whether the mark misdescribes the goods; and if so, (2) whether consumers are likely to believe the misrepresentation.  See In re White Jasmine LLC, 106 USPQ2d 1385, 1394 (TTAB 2013) (citing In re Quady Winery, Inc., 221 USPQ 1213, 1214 (TTAB 1984)); TMEP §1209.04. 

 

Regarding the first part of the test, a mark is misdescriptive when the mark merely describes a significant aspect of the goods that the goods could plausibly possess but in fact do not. In re Hinton, 116 USPQ2d 1051, 1052 (TTAB 2015); In re Schniberg, 79 USPQ2d 1309, 1312 (TTAB 2006); In re Phillips-Van Heusen, 63 USPQ2d 1047, 1048 (TTAB 2005); see TMEP §1209.04.  To be merely descriptive, a mark must immediately convey knowledge of a quality, feature, function, or characteristic of an applicant’s goods. In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (quoting In re Bayer Aktiengesellschaft, 488 F.3d 960, 963, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)); TMEP §1209.01(b).

 

In this case, TWO TONE means “Having two colors or two shades of a single color”, which is merely descriptive of applicant’s goods in that the clothing goods have two colors or two shades of a single color.  See the evidence attached to the Office Action dated September 6, 2019 at p. 2. And it is plausible that the goods would possess such a feature because the words TWO TONE are commonly used in the clothing industry to describe clothes that have two colors or two shades of a single color, as shown by the evidence attached to the Office Action dated September 6, 2019 at p. 3-8. However, in this case, it appears the goods do not in fact possess this feature, because applicant specifically states in the amended identification of goods “none of the foregoing primarily have two colors or two shades of a single color”. See the Amended Identification of Goods in the Response to Office Action dated December 26, 2019 at p. 1.

 

Regarding the second part of the test, the Board has applied the reasonably prudent consumer test in assessing whether consumers are likely to believe the misrepresentation.  In re Hinton, 116 USPQ2d 1051, 1052 (TTAB 2015) (citing R. J. Reynolds Tobacco Co. v. Brown & Williamson Tobacco Corp., 226 USPQ 169, 179 (TTAB 1985)). 

 

In this case, the attached evidence from Burberry, True Religion, Net-A-Porter, Bardot, Ann Taylor and Herve Leger Paris shows that the reasonably prudent consumer is likely to believe the representation because the words TWO TONE are commonly used in the clothing industry to describe clothes that have two colors or two shades of a single color, as shown by the evidence attached to the Office Action dated September 6, 2019 at p. 3-8.

 

Therefore, registration is refused pursuant to Section 2(e)(1) of the Trademark Act.

 

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

 

IDENTIFICATION OF GOODS REQUIREMENT

 

Applicant amended the identification and left quotation marks in it.

 

Applicant must correct the punctuation in the identification to clarify the individual items in the list of goods.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01(a).  Proper punctuation in identifications is necessary to delineate explicitly each product or service within a list and to avoid ambiguity.  Commas, semicolons, and apostrophes are the only punctuation that should be used in an identification of goods. TMEP §1402.01(a). An applicant should not use colons, periods, exclamation points, and question marks in an identification.  Id.  In addition, applicants should not use symbols in the identification such as asterisks (*), at symbols (@), or carets.  Id.

 

In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods, (2) before and after “namely,” and (3) between each item in a list of goods following “namely” (e.g., personal care products, namely, body lotion, bar soap, shampoo). Id. Semicolons generally should be used to separate a series of distinct categories of goods within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners).  Id. 

 

Therefore, applicant must deleted the quotation marks.

 

Applicant may adopt the following identification, if accurate:

 

Class 025: Clothing, namely, shirts, t-shirts, long-sleeved shirts, undershirts, polo shirts, rugby shirts, jerseys, dress shirts, denim jeans, hooded sweatshirts, warm-up suits, snow suits, parkas, cardigans, pants, jean jackets, cargo pants, shorts, boxer shorts, tops as clothing, tank tops, sweat shirts, sweat jackets, sweat shorts, sweat pants, sweaters, vests, fleece vests, pullovers, jackets, coats, blazers, suits, turtlenecks, reversible jackets, wind-resistant jackets, shell jackets, sports jackets, golf and ski jackets, heavy coats, overcoats, top coats, swimwear, beachwear, visors being headwear, headbands, ear muffs, thermal underwear, long underwear, underclothes, caps being headwear, hats, knit caps being headwear, headwear, scarves, bandanas, belts, neckwear, ties as clothing, robes, gloves, boots, rainwear, footwear, shoes and sneakers; none of the foregoing primarily have two colors or two shades of a single color

 

Applicant may amend the identification to clarify or limit the goods, but not to broaden or expand the goods beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods may not later be reinserted.  See TMEP §1402.07(e).

 

For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

TRADEMARK ATTORNEY ADVISORY

 

Because of the legal technicalities and strict deadlines of the trademark application process, applicant may wish to hire a private attorney who specializes in trademark matters to assist in the process. The assigned trademark examining attorney can provide only limited assistance explaining the content of an Office action and the application process.  USPTO staff cannot provide legal advice or statements about an applicant’s legal rights.  TMEP §§705.02, 709.06.  See Hiring a U.S.-licensed trademark attorney for more information.

 

RESPONSE GUIDELINES

 

For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

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 and requirement 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. 

 

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.  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.    

 

 

/Rebecca Lee/

Examining Attorney

Law Office 122

(571) 272 - 7809

Rebecca.Lee1@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 January 27, 2020 for

U.S. Trademark Application Serial No. 88463571

 

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. 

 

 

/Rebecca Lee/

Examining Attorney

Law Office 122

(571) 272 - 7809

Rebecca.Lee1@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 January 27, 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.”