United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88476705
Mark: NOTHING BUT NET
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Correspondence Address: KAELA JOYNER, NY BAR MEMBER REG. NO. 541 LEGALZOOM LEGAL SERVICES, LTD. 101 N. BRAND BLVD., 11TH FLOOR
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Applicant: STR8 SPORTS, INC.
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Reference/Docket No. L532665646
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: September 16, 2019
INTRODUCTION
SEARCH OF OFFICE’S DATABASE OF MARKS
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).
FAILURE TO FUNCTION AS A MARK
Widely-used Commonplace Message
Terms and expressions that merely convey an informational message are not registrable. In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229 (TTAB 2010). Determining whether the term or expression functions as a trademark or service mark depends on how it would be perceived by the relevant public. In re Eagle Crest, Inc., 96 USPQ2d at 1229; In re Aerospace Optics, Inc., 78 USPQ2d 1861, 1862 (TTAB 2006); TMEP §1202.04. “The more commonly a [term or expression] is used, the less likely that the public will use it to identify only one source and the less likely that it will be recognized by purchasers as a trademark [or service mark].” In re Hulting, 107 USPQ2d 1175, 1177 (TTAB 2013) (quoting In re Eagle Crest, Inc., 96 USPQ2d at 1229); TMEP §1202.04(b).
The attached evidence from the Internet shows that this expression is commonly used to refer to doing something perfectly derived from basketball in which a player shoots the basketball and gets the basketball inside the rim without touching the rim with the ball. See http://www.sportslingo.com/sports-glossary/n/nothing-but-net/, http://wordcraft.infopop.cc/dictionary/part8.htm#nothing_but_net and http://www.collinsdictionary.com/submission/5825/Nothing+but+net. Additionally, the attached internet evidence shows that this expression, NOTHING BUT NET is a commonly used http://www.google.com/search?rlz=1C1GCEB_enUS864US864&q=%22nothing+but+net%22+shirt&tbm=isch&source=univ&sa=X&ved=2ahUKEwjAq6Hi69XkAhVDmuAKHQDUD9EQsAR6BAgHEAE&biw=1536&bih=818#spf=1568654105242, http://www.bing.com/shop?q=%22nothing+but+net%22+apparel&FORM=SHOPTB and http://www.amazon.com/s?k=%22nothing+but+net%22&i=fashion&ref=nb_sb_noss_2. Because consumers are accustomed to seeing this expression commonly used on clothing goods by many different sources, they would not perceive it as a mark identifying the source of applicant’s goods and/or services but rather as only conveying an informational message.
An applicant may not overcome this refusal by amending the application to seek registration on the Supplemental Register or asserting a claim of acquired distinctiveness under Section 2(f). TMEP §1202.04(d); see In re Eagle Crest, Inc., 96 USPQ2d at 1229. Nor will submitting a substitute specimen overcome this refusal. See TMEP §1202.04(d).
For this reasons, registration is refused of the mark, NOTHING BUT NET.
RESPONSE TO REFUSAL
Although the applicant's mark has been refused registration, the applicant may respond to the refusal by submitting evidence and offering argument against the refusal and in support of registration.
POTENTIAL SECTION 2(d) REFUSAL – PRIOR PENDING APPLICATIONS
The filing date of pending U.S. Application Serial No. 88200719 precedes applicant’s filing date. See attached referenced application. If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s). See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced applications.
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
Although the applicant is not required to respond to the issue of the prior pending application(s), the applicant must respond to the above/below refusal(s)/requirement(s) within six months of the mailing date of this Office action to avoid abandonment.
RESPONSE GUIDELINES
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.
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
/Karen S. Derby/
Examining Attorney
U.S. Patent and Trademark Office
Law Office 123
Karen.Derby@uspto.gov
571.270.7070
RESPONSE GUIDANCE