To: | Full Sail, LLC (dsigalow@allendyer.com) |
Subject: | U.S. Trademark Application Serial No. 88476231 - TECHKIT - 131061 |
Sent: | August 12, 2019 08:45:39 PM |
Sent As: | ecom125@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88476231
Mark: TECHKIT
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Correspondence Address: ALLEN, DYER, DOPPELT & GILCHRIST, P.A. 255 S. ORANGE AVENUE, SUITE 1401
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Applicant: Full Sail, LLC
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Reference/Docket No. 131061
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.
Issue date: August 12, 2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SEARCH OF OFFICE’S DATABASE OF MARKS
SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
Standard of Analysis for Section 2(e)(1) Refusal
“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).
In the present case, applicant is seeking registration of TECHKIT for “Computer hardware, namely, personal computers, processors and monitors, and computer software for use in connection with the teaching of the entertainment and media business, entertainment program directing and producing, cinematography, entertainment program editing, production design, motion picture film production, sound recording, screen writing, digital media mixing, computer animation, audio production, music production, graphic design, digital film production, entertainment industry accounting, entertainment industry budgeting, artist management and production management, entertainment marketing, promotion, fund-raising and advertising for independent artists, film makers and recording artists, all offered together as a unit” in International Class 9.
Here, the attached dictionary evidence shows that the word “TECH” is an informal term for a technical college. See attached dictionary evidence. Additionally, the attached Internet evidence from abbreviations.com shows that the term “TECH” also is a shorthand term for “technology”, and the attached dictionary evidence shows that the term “technology” refers to “Machinery and equipment developed from the application of scientific knowledge”. See attached abbreviations and dictionary evidence. Finally, the attached dictionary evidence shows that the term “KIT” refers to “A set of articles or equipment needed for a specific purpose”. See attached dictionary evidence. Thus, a “TECH KIT” is either a set of articles or equipment comprised of machinery and equipment developed from the application of scientific knowledge, and which is needed for a specific purpose, or a set of articles or equipment needed for a specific purpose which relates to performance in a technical college.
The applicant’s identified goods consists of computer hardware and computer software sold as a unit for use in teaching a variety of subjects, with no restriction as to whether the goods are provided in furtherance of teaching at a technical college. Thus, the applicant’s goods fall within both meanings of the term “TECH KIT” described in the above paragraph, and the term is therefore merely descriptive of the identified goods. Additionally, the attached Internet evidence shows that the term “TECH KIT” is regularly used to describe a set of technological articles or equipment (such as chargers, connectors, and adapter cables) used for a specific purpose. See attached Internet evidence. Due to their exposure to this term used in a descriptive manner, consumers are more likely to view the term “TECH KIT” as merely describing the applicant’s goods, and not as identifying the source of those goods.
Finally, although applicant has compressed the terms “TECH” and “KIT” into the single term, “TECHKIT”, combining two merely descriptive words into a single word does not overcome the merely descriptive nature of the mark. In re Petroglyph Games, Inc., 91 USPQ2d 1332, 1341 (TTAB 2009) (holding BATTLECAM merely descriptive of computer game software with a feature that involve battles and provides the player with the option to utilize various views of the battlefield); In re Cox Enters., 82 USPQ2d 1040, 1043 (TTAB 2007) (holding THEATL merely descriptive of publications featuring news and information about Atlanta where THEATL was the equivalent of the nickname THE ATL for the city of Atlanta); In re Tower Tech, Inc., 64 USPQ2d 1314, 1317-18 (TTAB 2002) (holding SMARTTOWER merely descriptive of highly automated cooling towers); In re Sun Microsystems, Inc., 59 USPQ2d 1084, 1085 (TTAB 2001) (holding AGENTBEANS merely descriptive of computer software for use in developing and deploying application programs on a global computer network).
Accordingly, registration is refused under Section 2(e)(1) of the Trademark Act because the applied-for mark merely describes a feature or characteristic of the goods.
Applicant should note the following additional ground for refusal.
SECTIONS 1 AND 45 REFUSAL – UNACCEPTABLE SPECIMEN
An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods and/or services identified in the application or amendment to allege use. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, and displays associated with the actual goods at their point of sale. See TMEP §§904.03 et seq. Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods. TMEP §904.03(i).
Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(1) Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the goods and/or services identified in the application or amendment to allege use. A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.” The substitute specimen cannot be accepted without this statement.
(2) Amend the filing basis to intent to use under Section 1(b), for which no specimen is required. This option will later necessitate additional fee(s) and filing requirements such as providing a specimen. If applicant amends to Section 1(b), applicant may no longer overcome the Section 2(e)(1) Refusal by an amendment to the Supplemental Register.
For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.
If applicant responds to the refusals, applicant must also respond to the requirements set forth below
APPLICANT MUST AMEND ITS IDENTIFICATION OF GOODS
Certain wording in the identification is indefinite or overly broad and must be clarified. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1904.02(c), (c)(ii). Please see the notes and suggested amendments below.
Applicant should note that any wording in bold, in italics, and/or in ALL CAPS below offers guidance and/or shows the changes being
proposed for the identification of goods and services. If there is wording in the applicant’s version of the identification of goods and services which should be
removed, it will be shown with a line through it such as this: strikethrough. When making its amendments, applicant should enter them in standard font, not in
bold, in italics, underlined and/or in ALL CAPS.
Applicant may substitute the following wording, if accurate:
International Class 9: Computer hardware, namely, personal computers, processors and monitors, and computer software FOR {applicant must state the actual function of the software, and not merely that it used in connection with teaching, e.g., creating music, graphic design, recording video} for use in connection with the teaching of the entertainment and media business, entertainment program directing and producing, cinematography, entertainment program editing, production design, motion picture film production, sound recording, screen writing, digital media mixing, computer animation, audio production, music production, graphic design, digital film production, entertainment industry accounting, entertainment industry budgeting, artist management and production management, entertainment marketing, promotion, fund-raising and advertising for independent artists, film makers and recording artists, all offered together as a unit
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.
ATTORNEY BAR CREDENTIALS REQUIRED
Failure to comply with this requirement is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814. Merely stating that the attorney’s bar information is available on a state bar’s website is an insufficient response and will not make the relevant information of record. See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).
To provide attorney bar credentials. Open the correct TEAS response form and enter the serial number, answer “yes” to wizard question #3, and on the “Additional Statement(s)” page in the “Miscellaneous Statement” field (1) explain the documentation provided and (2) click the button below the text box to attach evidence.
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.
ASSISTANCE
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
/Kyle Ingram/
Kyle Ingram
Attorney Advisor
Law Office 125
(571)272-5276
RESPONSE GUIDANCE