Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

Issue date:  April 01, 2020

This Office action is in response to applicant’s communication filed on March 12, 2020.

The previous Office Action of September 12, 2019, and all supporting evidence attached thereto, is incorporated by reference herein. 

After review of the Response, the following is determined:

• Section 2(e)(1) descriptiveness refusal - is MAINTAined and made FINAL.

Refusal made final

The refusal under Trademark Act Section 2(e)(1) is now made FINAL for the reasons set forth below.  See 15 U.S.C. §1052(e)(1); 37 C.F.R. §2.63(b).

Section 2(e)(1) Descriptiveness Refusal

Registration is refused because the applied-for mark merely describes a feature, characteristic, and/or function of applicant’s goods.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

Applicant’s mark is CONNECTED (stylized) for “Smartwatches; personal digital assistants in the shape of a watch”.  The term “CONNECTED” is the common descriptive name for computerized electronic goods that are capable of communicating with a mobile device and/or accessing the Internet and maintaining an Internet connection (see the previously attached online dictionary definition evidence showing that “connected” refers to the ability of a mobile electronic device, such as a smartwatch, to communicate with the Internet; see also the attached article from Britannica Academic at http://academic.eb.com/levels/collegiate/article/smartwatch/624075 indicating that a functional aspect of smartwatches is the ability to connect to smartphones; and see the attached article from an online encyclopedia at http://en.wikipedia.org/wiki/Smartwatch showing that smartwatches communicate with smartphones and more recently may also feature independent ability to connect with the internet and/or other electronic computing devices).  Therefore, the mark CONNECTED describes a feature, characteristic, and/or function of applicant’s goods and is accordingly refused registration on the principal register on the ground that it is merely descriptive.  See the previously attached additional evidence from applicant’s website at http://www.citizenwatch-global.com/bluetoothwatch/index.html (“authentic analogue watch that connects to your smartphone”; “analogue design plus smartphone connectivity”; “smartwatch connected watch navi” [emphasis added] and http://www.citizenwatch-global.com/bluetoothwatch/navi/index.html (“smartwatch connected watch navi”; “Smartwatches and connected watches are watches that connect to your smartphone so you can conveniently use a variety of functions.” [emphasis added]), in which the functionality of “connected” watches and smartwatches is touted as an attractive feature of applicant’s goods.  Notably, on its own websites promoting its smartwatch goods, applicant uses the term “connected watches” in a descriptive manner, using the same size fonts for “smartwatches” and “connected watches” and treating these terms as descriptive of categories of watches; for example: “What exactly are today’s popular smartwatches and connected watches capable of?  Are they really convenient? Most people have such questions on their mind when they’re considering buying one.  So, we’ll introduce seven things that most smartwatches and connected watches can do!” (id; emphasis added).

See also the additional attached evidence from the following websites showing the term “CONNECTED” is commonly used in a descriptive manner for smartwatches and other watch-like electronic devices capable of communicating with a smartphone or other internet-enabled device, and/or capable of accessing the internet independently; furthermore, the attached evidence shows common use of the term “CONNECTED” as the name of a category of watches:

• Armani: http://www.armani.com/us/armanicom/emporio-armani/emporio-armani-touchscreen-stainless-steel-smartwatch_cod46602272gd.html#dept=cnnctdwtchs ;
• Fossil: http://www.fossil.com/en-us/shopbr/setting-up-your-fossil-q-smartwatch-with-iphone ;
• Garmin: http://buy.garmin.com/en-US/US/p/602063 ;
• Louis Vuitton: http://us.louisvuitton.com/eng-us/products/connected-watch-tambour-horizon-monogram-brown-42-nvprod1380098v ;
• Samsung: http://www.samsung.com/us/explore/galaxy-watch/ ;
• Skagen: http://www.skagen.com/en-us/hagen-connected-steel-mesh-hybrid-smartwatch-skt1107 ;
• Tag Heuer: http://faq.tagheuer.com/articles/en_US/FAQ/Can-I-use-the-TAG-Heuer-Connected-with-my-iOS-iPhone/ .

And see the attached online articles showing that the term “CONNECTED” (with emphasis added) is commonly used in connection with smartwatches and watches capable of accessing the internet via communication with a smartphone or other electronic device, or independently:

• http://www.theverge.com/circuitbreaker/2020/3/12/21176639/tag-heuer-connected-third-generation-luxury-smartwatch-sensors-design-watch-style “Tag Heuer’s third-generation luxury smartwatch gets more sensors and a refined design; The new Connected smartwatch looks less like a gadget and more like a watch”;
• http://blog.longsjewelers.com/watches/connected-watches “Connected Watches: How Luxury Brands Incorporate Smart Watch Features”;
• http://www.toptenreviews.com/best-smartwatch “Best smartwatch: connected watches in modern or classic styles”;
• http://www.gamesradar.com/best-smartwatch/ “Best Smartwatch 2020: specs and value ranked with cheapest prices listed” (“And though only a handful of manufacturers are making connected watches worth wearing…”).

In addition to being merely descriptive, the applied-for mark appears to be generic in connection with the identified goods and/or services.  “A generic mark, being the ‘ultimate in descriptiveness,’ cannot acquire distinctiveness” and thus is not entitled to registration on either the Principal or Supplemental Register under any circumstances.  In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 1336, 116 USPQ2d 1262, 1264 (Fed. Cir. 2015) (quoting H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 989, 228 USPQ 528, 530 (Fed. Cir. 1986)); see TMEP §§1209.01(c) et seq., 1209.02(a).  Therefore, the trademark examining attorney cannot recommend that applicant amend the application to proceed under Trademark Act Section 2(f) or on the Supplemental Register as possible response options to this refusal.  See TMEP §1209.01(c).

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)). 

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).  “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).

“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).  The question is not whether someone presented only with the mark could guess what the goods and/or services are, but “whether someone who knows what the goods and[/or] services are will understand the mark to convey information about them.”  DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012) (quoting In re Tower Tech, Inc.,64 USPQ2d 1314, 1316-17 (TTAB 2002)); In re Mueller Sports. Med., Inc., 126 USPQ2d 1584, 1587 (TTAB 2018).

Terms that describe the function or purpose of a product or service may be merely descriptive.  TMEP §1209.03(p); see, e.g., In re Hunter Fan Co., 78 USPQ2d 1474, 1477 (TTAB 2006) (holding ERGONOMIC merely descriptive of ceiling fans); In re Wallyball, Inc., 222 USPQ 87, 89 (TTAB 1984) (holding WALLYBALL merely descriptive of sports clothing and game equipment); In re Orleans Wines, Ltd., 196 USPQ 516, 517 (TTAB 1977) (holding BREADSPRED merely descriptive of jams and jellies). 

The applied-for mark shows the wording in stylized lettering.  Stylized descriptive or generic wording is registrable only if the stylization creates a commercial impression separate and apart from the impression made by the wording itself.  See In re Cordua Rests., Inc., 823 F.3d 594, 606, 118 USPQ2d 1632, 1639-40 (Fed. Cir. 2016); In re Northland Aluminum Prods., Inc., 777 F.2d 1556, 1561, 227 USPQ 961, 964 (Fed. Cir. 1985); TMEP §1209.03(w).  Common and ordinary lettering with minimal stylization, as in this case, is generally not sufficiently striking, unique, or distinctive as to make an impression on purchasers separate from the wording.  See In re Sadoru Grp., Ltd., 105 USPQ2d 1484, 1487 (TTAB 2012). 

The examining attorney previously advised applicant as to the possibility of amending the present application to seek registration on the Supplemental Register as a means of overcoming the descriptiveness refusal; however, in light of the additional attached evidence which shows the mark may be generic, the advisory as to the Supplemental Register is withdrawn as it no longer is an appropriate response option.

Applicant’s arguments have been considered and found unpersuasive for the reason(s) set forth below.

Applicant argues that the descriptive refusal should be withdrawn because “there is no evidence the products covered by this application are capable of accessing the Internet and maintaining an Internet connection”.  The evidence attached to the first Office Action showed that applicant advertises on its website that its watches are capable of communicating with smartphones and mobile phones for use in accessing functions of the smartphone via the smartwatch, and a function of smartphones is internet access (see the attached dictionary definition of “smartphone” from http://www.lexico.com/en/definition/smartphone showing that smartphones are mobile phones with computer functions, such as accessing the internet and download programs).  The additional evidence attached to this action shows that the term “CONNECTED” is commonly used descriptively within applicant’s industry to indicate features or capabilities of watches and smartwatches that can communicate with smartphones and/or independently access the internet.  Finally, as shown in the attached evidence, the term “CONNECTED” also appears to be used within applicant’s industry as a category name for watches and smartwatches that can communicate with smartphones and/or independently access the internet. 

For the above stated reasons, the Trademark Act Section 2(e)(1) refusal is FINAL.

How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

/Kaelie E. Kung/

Examining Attorney

Law Office 103

571-272-8265

kaelie.kung@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 April 01, 2020 for

U.S. Trademark Application Serial No. 88478856

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. 

/Kaelie E. Kung/

Examining Attorney

Law Office 103

571-272-8265

kaelie.kung@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 April 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.”