To: | Nemo Equipment, Inc. (tmfilings@nhpatlaw.com) |
Subject: | U.S. Trademark Application Serial No. 88489798 - SPOON - NEMO-T016US |
Sent: | September 25, 2019 01:29:16 PM |
Sent As: | ecom103@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88489798
Mark: SPOON
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Correspondence Address:
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Applicant: Nemo Equipment, Inc.
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Reference/Docket No. NEMO-T016US
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 25, 2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues 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
ADVISORY: PRIOR-FILED APPLICATION
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.
SECTION 2(e)(1) REFUSAL – MERELY DESCRIPTIVE
Registration is refused because the applied-for mark merely describes a characteristic 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.
A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods. 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)).
“Whether consumers could guess what the product is from consideration of the mark alone is not the test.” In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
The applied for mark is “SPOON” (standard character form) for “sleeping bags” in International Class 24.
The attached Internet evidence from the American Heritage Dictionary of the English Language establishes that “SPOON” means “a utensil consisting of a small, shallow bowl on a handle, used in preparing, serving, or eating food” or “something similar to this utensil or its bowl” (see http://www.ahdictionary.com/word/search.html?q=spoon).
Applicant’s own specimen establishes that applicant uses the wording “SPOON” descriptively in connection with its goods to describe their shape. For example, applicant’s specimen includes the phrases “Spoon-Shaped Bag Designed for Side Sleepers” and “With a unique Spoon shape adding room at the elbows and knees, the Riff is a three-season down men’s backpacking bag…”, among others. A term that describes the shape or form of a product is merely descriptive. In re Metcal Inc., 1 USPQ2d 1334 (TTAB 1986) (holding SOLDER STRAP merely descriptive of self regulating heaters in the form of flexible bands or straps); In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982) (holding TOOBS merely descriptive of bathroom and kitchen fixtures in the shape of tubes).
Applicant’s goods are sleeping bags. Therefore, the proposed mark merely describes a characteristic of applicant’s goods, namely, that they have a spoon-shaped design for additional room and comfort for side sleepers.
Conclusion
Therefore, because applicant’s proposed mark is merely descriptive of applicant’s goods, registration is refused under Section 2(e)(1) of the Trademark Act.
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.
Advisory: Supplemental Register or Section 2(f) Claim of Acquired Distinctiveness
To seek registration on the Principal Register based on a claim of acquired distinctiveness under Section 2(f), applicant generally may (1) submit actual evidence that the mark has acquired distinctiveness of the goods, (2) claim ownership of an active prior U.S. registration for the same mark for sufficiently similar goods, or (3) provide the following verified statement of five years’ use: “The mark has become distinctive of the goods 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 five years immediately before the date of this statement.” See 15 U.S.C. §1052(f); 37 C.F.R. §2.41(a); TMEP §§1212.03-.06 et seq.
To amend the application to the Supplemental Register, applicant must provide a written statement requesting that the application be amended to the Supplemental Register. TMEP §816.01; see 15 U.S.C. §1091; 37 C.F.R. §2.47.
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. 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
/Ray Harmon/
Trademark Examining Attorney
Law Office 103
United States Patent & Trademark Office
(571) 272-0386
raymond.harmon@uspto.go
RESPONSE GUIDANCE