To: | Grimm, Michael (mike@semgenius.com) |
Subject: | U.S. Trademark Application Serial No. 88502507 - REELREPORTS - N/A |
Sent: | February 03, 2020 03:35:39 PM |
Sent As: | ecom125@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88502507
Mark: REELREPORTS
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Correspondence Address: 1945 SOUTH OCEAN DRIVE, APT 2002
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Applicant: Grimm, Michael
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Reference/Docket No. N/A
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: February 03, 2020
This Office action is in response to applicant’s communication filed on January 14, 2020.
In a previous Office action dated September 24, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(e)(1) merely descriptive refusal. In addition, applicant was required to satisfy the following requirement: amend the identification of services.
Based on applicant’s response, the trademark examining attorney notes that the following requirement has been satisfied: identification of services. See TMEP §§713.02, 714.04.
Further, the trademark examining attorney maintains and now makes FINAL the refusal in the summary of the issue below. See 37 C.F.R. §2.63(b); TMEP §714.04.
All arguments and evidence included in the September 24, 2019 Office action are incorporated herein by reference.
SUMMARY OF THE ISSUE MADE FINAL that applicant must address:
SECTION 2(E)(1) MERELY DESCRIPTIVE REFUSAL – FINAL
Registration remains refused because the applied-for mark merely describes the subject matter and nature of 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.
“Whether consumers could guess what the service is from consideration of the mark alone is not the test.” In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
Applicant’s mark is REELREPORTS for “Entertainment services, namely, providing a web site featuring photographic, audio, video and prose presentations featuring educational information, news, and educational tutorials in the field of fishing” in International Class 41.
The wording REELREPORTS merely describes the subject matter and nature of applicant’s services, namely, that applicant’s website offers detailed accounts or statements related to cylindrical devices attached to fishing rods used to let out or wind up the line.
The previously attached evidence from The American Heritage Dictionary shows that the wording “REEL” means “a cylindrical device attached to a fishing rod to let out or wind up the line.” The previously attached evidence from Merriam-Webster shows that the wording “REPORT” means “a usually detailed account or statement.” Thus, the collective wording REELREPORTS merely describes detailed accounts or statements related to cylindrical devices attached to fishing rods used to let out or wind up the line. The wording REELREPORTS therefore merely describes the subject matter and nature of applicant’s Class 41 services, as set forth in the identification.
Per applicant’s response communication dated January 14, 2020, applicant argues that “the mark REELREPORTS is to identify the brand of apparel, website and services.” This argument is unpersuasive. Determining the descriptiveness of a mark is done in relation to an applicant’s services, the context in which the mark is being used, and the possible significance the mark would have to the average purchaser because of the manner of its use or intended use. See In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (citing In re Bayer Aktiengesellschaft, 488 F.3d 960, 963-64, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)); TMEP §1209.01(b). Descriptiveness of a mark is not considered in the abstract. In re Bayer Aktiengesellschaft, 488 F.3d at 963-64, 82 USPQ2d at 1831. In this case, The wording REELREPORTS merely describes the subject matter and nature of applicant’s Class 41 services, namely, that applicant’s website offers detailed accounts or statements related to cylindrical devices attached to fishing rods used to let out or wind up the line.
Further, the previously and newly attached third-party evidence from Outdoor News, Maryland Department of Natural Resources, Arizona Game & Fish, New Mexico Game & Fish, BassMan, Bloodydecks, Reel Maintenance, LearningHowtoFish.com, TakeMeFishing.org, Sota Fishing, TackleTour, Orvis, Fishing Minnesota, and Charlie Taylor Fishing shows that the wordings REEL(S) and REPORTS are commonly used in commerce to describe website content in the field of fishing. See attached evidence. The applied-for wording therefore merely describes the subject matter and nature of applicant’s Class 41 services, as set forth in the identification.
In addition, in this case, the combination of descriptive terms comprising the applied-for wording does not create a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the services, as to obviate refusal under Section 2(e)(1).
Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the services is the combined mark registrable. See In re Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968); In re Positec Grp. Ltd., 108 USPQ2d 1161, 1162-63 (TTAB 2013).
In this case, both the individual components (i.e., REEL and REPORTS) and the composite result are descriptive of applicant’s services and do not create a unique, incongruous, or nondescriptive meaning in relation to the services. Specifically, in relation to applicant’s identified services, the proposed mark REELREPORTS merely describes the subject matter and nature of applicant’s services, namely, that applicant’s website offers detailed accounts and statements in the nature of educational or news REPORTS related to fishing REELS, or cylindrical devices attached to fishing rods used to let out or wind up the line. The composite meaning therefore fails to create a nondescriptive meaning in the context of the applicant’s services, and registration is refused.
For these reasons, the mark is merely descriptive of applicant’s services, and registration of the applied-for mark on the Principal Register remains refused.
ADVISORY: SECTION 1(b) APPLICATION NOT YET ELIGIBLE FOR SUPPLEMENTAL REGISTER
A mark in an application under Trademark Act Section 1(b) is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use under 37 C.F.R. §2.76 has been filed. 37 C.F.R. §§2.47(d), 2.75(b); TMEP §§815.02, 1102.03. When a Section 1(b) application is successfully amended to the Supplemental Register, the application effective filing date will be the date applicant met the minimum filing requirements under 37 C.F.R. §2.76(c) for the amendment to allege use. TMEP §§816.02, 1102.03; see 37 C.F.R. §2.75(b).
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 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).
/Amanda Galbo/
Amanda Galbo
Trademark Examining Attorney
Law Office 125
(571) 272-5391
amanda.galbo@uspto.gov
RESPONSE GUIDANCE