United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88487079
Mark: NY
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Correspondence Address:
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Applicant: Royal Life, LLC
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Reference/Docket No. N/A
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 19, 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
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).
SECTION 2(e)(2) REFUSAL – PRIMARILY GEOGRAPHICALLY DESCRIPTIVE
A mark is primarily geographically descriptive when the following is demonstrated:
(1) The primary significance of the mark is a generally known geographic place or location;
(2) The goods and/or services for which applicant seeks registration originate in the geographic place identified in the mark; and
(3) Purchasers would be likely to make a goods-place or services-place association; that is, purchasers would be likely to believe that the goods and/or services originate in the geographic place identified in the mark.
TMEP §1210.01(a); see In re Societe Generale des Eaux Minerales de Vittel S.A., 824 F.2d 957, 959, 3 USPQ2d 1450, 1452 (Fed. Cir. 1987); In re Hollywood Lawyers Online, 110 USPQ2d 1852, 1853 (TTAB 2014).
The mark is comprised of the letters “NY” which is ubiquitously known to be the acronym for “NEW YORK”. The primary significance of the mark “NY” is a generally known geographic place or location, as corroborated by the attached evidence.
(1) The primary significance of the mark is a generally known geographic place or location.
(2) The goods and/or services for which applicant seeks registration do not originate in the geographic place identified in the mark.
(3) Purchasers would be likely to make a goods-place or services-place association; that is, purchasers would be likely to believe that the goods and/or services originate in the geographic place identified in the mark.
(4) The misrepresentation regarding the geographic origin of the goods and/or services would be a material factor in a significant portion of the relevant consumers’ decision to buy the goods or use the services in question.
See In re Miracle Tuesday, LLC, 695 F.3d 1339, 1343, 104 USPQ2d 1330, 1332 (Fed. Cir. 2012) (citing In re Cal. Innovations Inc., 329 F.3d 1334, 1341, 66 USPQ2d 1853, 1858 (Fed. Cir. 2003)); In re Les Halles De Paris J.V., 334 F.3d 1371, 1373, 67 USPQ2d 1539, 1541 (Fed. Cir. 2003); TMEP §1210.01(b)-(c); see also In re Spirits Int’l, N.V., 563 F.3d 1347, 1353, 90 USPQ2d 1489, 1493 (Fed. Cir. 2009) (holding that the test for materiality incorporates a requirement that a “significant portion of the relevant consumers be deceived”).
When making a materiality determination, the Trademark Trial and Appeal Board looks to evidence regarding the probable reaction of purchasers to a particular geographical term used in connection with the goods. In re Compania de Licores Internacionales S.A., 102 USPQ2d 1841, 1850 (TTAB 2012); In re House of Windsor, Inc., 221 USPQ 53, 57 (TTAB 1983). Thus, indirect or circumstantial evidence of materiality, such as gazetteer entries and website evidence, is permitted; that is, materiality may be established by inference. Corporacion Habanos S.A. v. Guantanamera Cigars Co., 102 USPQ2d 1085, 1098 (TTAB 2012); see In re Les Halles de Paris, J.V., 334 F.3d 1371, 1374, 67 USPQ2d 1539, 1542 (Fed. Cir. 2003).
Accordingly, materiality is established when the evidence shows one of the following:
(1) The place named in the mark is famous as a source of the goods at issue.
(2) The goods are a principal product of the place named in the mark.
(3) The goods are, or are related to, the traditional products of the place named in the mark, or are an expansion of the traditional products of the place named in the mark.
In re Compania de Licores Internacionales S.A., 102 USPQ2d at 1850 (citing In re Cal. Innovations, Inc., 329 F.3d 1334, 1341, 66 USPQ2d 1853, 1857 (Fed. Cir. 2003); In re Save Venice N.Y., Inc., 259 F.3d. 1346, 1354, 59 USPQ2d 1778, 1784 (Fed. Cir. 2001); In re House of Windsor, Inc., 221 USPQ at 57); TMEP §1210.05(c)(i).
As discussed above, the acronym “NY” is synonymous with “NEW YORK” and is a well-known geographic location. New York is famous throughout the world, and is one of the most visited places in the world. See attached evidence. New York is known to be a mecca for fashion and clothing. See attached evidence. In re Compania de Licores Internacionales S.A., 102 USPQ2d 1841, 1850 (TTAB 2012).
In the present case, the attached evidence from various online magazines demonstrates that a significant portion of the relevant consumers would be materially influenced in the decision to purchase applicant’s product by the geographic meaning of the mark because New York is known to be famous for its fashion and clothing.
For the above reasons, registration is refused.
REQUIREMENT FOR INFORMATION
Applicant must provide a written statement explaining whether the goods are or will be manufactured, packaged, shipped from, sold in or have any other connection with the geographic location named in the mark. See 37 C.F.R. §2.61(b); TMEP §§814, 1210.03. Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.
Applicant should note the following additional ground for refusal.
SECTIONS 1, 2 AND 45 REFUSAL – MERELY ORNAMENTAL
The size, location, dominance, and significance of the alleged mark as used on the goods are all relevant factors in determining the commercial impression of the applied-for mark. See, e.g., In re Peace Love World Live, LLC, 127 USPQ2d 1400, 1403 (TTAB 2018) (quoting In re Hulting, 107 USPQ2d 1175, 1178 (TTAB 2013)); In re Lululemon Athletica Can. Inc., 105 USPQ2d at 1687 (quoting In re Right-On Co., 87 USPQ2d 1152, 1156 (TTAB 2008)); TMEP §1202.03(a).
With respect to clothing, consumers may recognize small designs or discrete wording as trademarks, rather than as merely ornamental features, when located, for example, on the pocket or breast area of a shirt. See TMEP §1202.03(a). Consumers may not, however, perceive larger designs or slogans as trademarks when such matter is prominently displayed across the front of a t-shirt. See In re Pro-Line Corp., 28 USPQ2d at 1142; In re Dimitri’s Inc., 9 USPQ2d 1666, 1667-68 (TTAB 1988); TMEP §1202.03(a), (b), (f)(i), (f)(ii).
In this case, the submitted specimen shows the applied-for mark, “NY”, located directly on the front portion of the hat, where ornamental elements often appear. See TMEP §1202.03(a), (b). Furthermore, the mark is displayed in a relatively large size on the clothing such that it dominates the overall appearance of the goods. Lastly, the applied-for mark appears to be a slogan or design element that is used in a merely decorative manner that would be perceived by consumers as having little or no particular source-identifying significance.
Therefore, consumers would view the applied-for mark as a decorative or ornamental feature of the goods, rather than as a trademark to indicate the source of applicant’s goods and to distinguish them from others.
In appropriate circumstances, applicant may overcome this refusal by satisfying one of the following options:
(1) Submit a different specimen (a verified “substitute” specimen) that 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 that shows proper trademark use for the identified goods in International Class 25. Examples of acceptable specimens that show non-ornamental use on clothing include hang tags and labels used inside a garment.
(2) Amend to the Supplemental Register, which is a second trademark register for marks not yet eligible for registration on the Principal Register, but which may become capable over time of functioning as source indicators.
(3) Claim acquired distinctiveness under Trademark Act Section 2(f) by submitting evidence that the applied-for mark has become distinctive of applicant’s goods; that is, proof that applicant’s extensive use and promotion of the mark allowed consumers now directly to associate the mark with applicant as the source of the goods.
(4) Submit evidence that the applied-for mark is an indicator of secondary source; that is, proof that the mark is already recognized as a source indicator for other goods or services that applicant sells/offers.
(5) Amend the filing basis to intent to use under Section 1(b). This option will later necessitate additional fee(s) and filing requirements.
For an overview of the response options above and instructions on how to satisfy each option online using the Trademark Electronic Application System (TEAS) form, see the Ornamental Refusal webpage.
MARK ON THE DRAWING AND SPECIMEN DIFFER
Registration is refused because the specimen does not show the mark in the drawing in use in commerce in International Class(es) 025, which is required in the application or amendment to allege use. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a), 1301.04(g)(i). The mark appearing on the specimen and in the drawing must match; that is, the mark in the drawing “must be a substantially exact representation of the mark” on the specimen. See 37 C.F.R. §2.51(a)-(b); TMEP §807.12(a).
In this case, the specimen displays the mark as “NY” in a style where the strokes making the letters are even in width throughout each stroke. However, the drawing displays the mark as a font where the letters appear to have barbs and taper at the ends. The mark on the specimen does not match the mark in the drawing because the stylization is very different. Applicant has thus failed to provide the required evidence of use of the mark in commerce. See TMEP §807.12(a).
Applicant may respond to this refusal by satisfying one of the following:
(1) Submit a new drawing of the mark that shows the mark on the specimen and, if appropriate, an amendment of the description and/or color claim that agrees with the new drawing. See 37 C.F.R. §2.72(a)-(b). The following amended description is suggested, if accurate: The mark consists of the stylized letters “NY”. Applicant may amend the mark in the drawing to match the mark on the specimen but may not make any other changes or amendments that would materially alter the drawing of the mark. See 37 C.F.R. §2.72(a)-(b); TMEP §807.14.
(2) Submit a different specimen (a verified “substitute” specimen) for each applicable international class that (a) shows the mark in the drawing in actual use in commerce for the goods and/or services in the application or amendment to allege use, and (b) 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.
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). Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and webpages that show the mark used in the actual sale, rendering, or advertising of the services. See TMEP §1301.04(a), (h)(iv)(C).
For more information about drawings and instructions on how to satisfy these response options online using the Trademark Electronic Application System (TEAS) form, see the Drawing webpage.
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
/Ada P. Han/
Trademark Examining Attorney
Law Office 106
US Patent & Trademark Office
(571) 272-5873
ada.han@uspto.gov
RESPONSE GUIDANCE