United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88479490
Mark: SCOUT
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Correspondence Address:
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Applicant: Scout Exchange LLC
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Reference/Docket No. SCT-601A
Correspondence Email Address: |
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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: March 23, 2020
This Office action is in response to applicant’s communication filed on March 6, 2020.
In a previous Office action dated September 11, 2019, the trademark examining attorney refused registration of the applied-for mark based on Trademark Act Section 2(e)(1) for being merely descriptive.
The trademark examining attorney maintains and now makes FINAL the Trademark Act Section 2(e)(1) refusal. See 37 C.F.R. §2.63(b); TMEP §714.04.
Section 2(e)(1) Refusal: Merely Descriptive
Summary of Section 2(e)(1)
Trademark Act Section 2(e)(1) bars registration of an applied-for mark that merely describes a purpose, function, use, and/or intended user of an 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.
The determination of whether a mark is merely descriptive is made in relation to an applicant’s services rather than in the abstract. DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012); TMEP §1209.01(b). A mark is merely descriptive if it describes a purpose, function, use, or intended user of an applicant’s 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)).
The applied-for mark is merely descriptive of applicant’s services.
Applicant seeks to register SCOUT for “Providing online, non-downloadable software in the field of employee recruitment to enable candidates to find job openings and to enable employers to find suitable candidates for employment”.
The applicant contends that the wording scout does not describe its services, which are characterized as “online, non-downloadable software”. 3/6/20 response to Office action. In actuality, scout means “to make a search”, “to find by making a search”, or “a person engaged in discovering and recruiting people of talent for a specialized field or activity”. See, e.g., Merriam-Webster Dictionary definition of scout attached to 9/11/19 Office action; Merriam-Webster Dictionary definition of talent scout attached hereto. Consistent with this, the wording scout is commonly used in the context of employee recruitment to describe finding employees. See, e.g., attached evidence from www.entrepreneur.com, www.businesssherpagroup.com, www.talentlyft.com, www.nytimes.com, http://endocrinenews.endocrine.org, and www.peoplescout.com. The applicant’s services are for the purpose of finding employees. See, Identification of Services in Application. SCOUT in the applied-for mark merely describes this purpose, function, or use of the services. Terms that describe the function, purpose, or use of a 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 mark also describes a group of intended users of the services. In particular, a scout is a person engaged in finding people for a particular field or activity. See, e.g., attached Merriam-Webster Dictionary definition of talent scout; Merriam-Webster Dictionary definition of scout attached to 9/11/19 Office action. The applicant’s services are for use by people engaged in finding employees. See, Identification of Services in Application. For these reasons, the mark is merely descriptive of a group of intended users of the services. A mark that describes an intended user or group of users of a service is merely descriptive. E.g., In re Planalytics, Inc., 70 USPQ2d 1453 (TTAB 2004) (holding GASBUYER merely descriptive of intended user of risk management services in the field of pricing and purchasing natural gas); In re Camel Mfg. Co., 222 USPQ 1031 (TTAB 1984) (holding MOUNTAIN CAMPER merely descriptive of intended users of retail and mail order services in the field of outdoor equipment and apparel); see TMEP §1209.03(i).
The applicant suggests that the applied-for mark is not merely descriptive because a consumer encountering the mark would not know, without the use of imagination, what the applicant’s services are. 3/6/20 response to Office action. A mark is merely descriptive if it describes a function, purpose, use, or intended user of applicant’s services. “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 this case, the evidence establishes that the mark merely describes a function, purpose, use, and/or intended user of applicant’s services. Accordingly, the standard for mere descriptiveness under Trademark Act Section 2(e)(1) is met.
The applicant also contends that the wording scout is not merely descriptive because it has multiple meanings. 3/6/20 response to Office action. Because descriptiveness is considered in relation to the relevant services, that “a term may have other meanings in different contexts is not controlling.” Robinson v. Hot Grabba Leaf, LLC, 2019 USPQ2d 149089, at *5 (TTAB 2019) (citing In re Canine Caviar Pet Foods, Inc., 126 USPQ2d 1590, 1598 (TTAB 2018)); TMEP §1209.03(e). “It is well settled that so long as any one of the meanings of a term is descriptive, the term may be considered to be merely descriptive.” In re Mueller Sports Med., Inc., 126 USPQ2d 1584, 1590 (TTAB 2018) (quoting In re Chopper Indus., 222 USPQ 258, 259 (TTAB 1984)).
The applicant further contends that the applied-for mark is registrable because there are other registrations on the Principal Register for the wording scout. 3/6/20 response to Office action. The fact that third-party registrations exist for marks allegedly similar to applicant’s mark is not conclusive on the issue of descriptiveness. See In re Scholastic Testing Serv., Inc., 196 USPQ 517, 519 (TTAB 1977); TMEP §1209.03(a). An applied-for mark that is merely descriptive does not become registrable simply because other seemingly similar marks appear on the register. In re Scholastic Testing Serv., Inc., 196 USPQ at 519; TMEP §1209.03(a). It is well settled that each case must be decided on its own facts and the Trademark Trial and Appeal Board is not bound by prior decisions involving different records. See In re Nett Designs, Inc., 236 F.3d 1339, 1342, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001); TMEP §1209.03(a). The question of whether a mark is merely descriptive is determined based on the evidence of record at the time each registration is sought. In re Virtual Indep. Paralegals, LLC, 2019 USPQ2d 111512, at *9 (TTAB 2019) (citing In re Nett Designs, Inc., 236 F.3d at 1342, 57 USPQ2d at 1566); TMEP §1209.03(a). As discussed above, the evidence of record establishes that the applied-for mark is merely descriptive of the services identified in the application.
The applicant also suggests that the Section 2(e)(1) refusal is inappropriate because there is alternative wording that can be used by competitors to identify similar goods and/or services. 3/6/20 response to Office action. It is well-settled that a mark may be merely descriptive under Section 2(e)(1) despite the fact that there are other ways to describe similar goods and/or services. A Section 2(e)(1) refusal is appropriate so long as the applied-for mark describes a purpose, use, function, and/or intended user of applicant’s services. See, e.g., 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).
Finally, the applicant asserts that the Section 2(e)(1) refusal should be withdrawn because doubt regarding descriptiveness must be resolved in its favor. 3/6/20 response to Office action. The evidence of record leaves no doubt that the mark is merely descriptive.
Conclusion
For the foregoing reasons, the refusal to register based on Section 2(e)(1) of the Trademark Act is continued and made final at this time.
Acquired Distinctiveness
In response to the refusal, applicant may amend the application to assert a claim of acquired distinctiveness under Trademark Act Section 2(f) if applicant has used the mark for a significant period of time in commerce that may lawfully be regulated by the U.S. Congress. See 15 U.S.C. §§1052(f), 1127; In re Etablissments Darty et Fils, 759 F.2d 15, 17, 225 USPQ 652, 653 (Fed. Cir. 1985); TMEP §1212.08. Use solely in a foreign country or between two foreign countries is not evidence of acquired distinctiveness in the United States. TMEP §§1010, 1212.08; see In re Rogers, 53 USPQ2d 1741, 1746-47 (TTAB 1999). Additionally, this use in commerce must be substantially exclusive and continuous for at least the five years prior to the date the amendment to Section 2(f) is requested. 15 U.S.C. §1052(f); TMEP §1212.05.
To amend the application to assert Section 2(f) based on five years’ use, applicant should request that the application be amended to assert a claim of acquired distinctiveness under Section 2(f), provide information regarding the length of use of the mark in commerce and/or dates of use, and include the following written statement claiming acquired distinctiveness, if accurate:
The mark has become distinctive of the 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 at least the five years immediately before the date of this statement.
TMEP §1212.05(d); see 15 U.S.C. §1052(f); 37 C.F.R. §2.41(a)(2); TMEP §1212.08. Applicant must verify this statement with an affidavit or signed declaration under 37 C.F.R. §2.20. 37 C.F.R. §2.41(a)(2); TMEP §1212.05(d); see 37 C.F.R. §2.193(e)(1).
Response to Office Action Required to Avoid Abandonment
How to respond. Click to file a request for reconsideration of this final Office action that fully resolves the outstanding refusal and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).
Jeanine Gagliardi
/Jeanine Gagliardi/
Examining Attorney
Law Office 120
571-272-3177
jeanine.gagliardi@uspto.gov
RESPONSE GUIDANCE
