Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

NONFINAL 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).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

 

Issue date:  September 28, 2019

 

The assigned examining attorney has reviewed the referenced application and determined the following.

 

SUMMARY OF ISSUES:

 

• Registration Refused – Section 2(e)(1) Merely Descriptive
• Identification of Goods
• Recitation of Services
• Generic Color Claims Required in Color Claim and Description

 

Search Results

 

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).

 

Applicant should note the additional ground for refusal. 

 

Registration Refused – Section 2(e)(1) Merely Descriptive

 

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

 

In addition to being merely descriptive, the applied-for mark appears to be generic in connection with the identified goods and, therefore, incapable of functioning as a source-identifier for applicant’s goods.  In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987); In re Empire Tech. Dev. LLC, 123 USPQ2d 1544 (TTAB 2017); see TMEP §§1209.01(c) et seq., 1209.02(a).  Under these circumstances, neither an amendment to proceed under Trademark Act Section 2(f) nor an amendment to the Supplemental Register can be recommended.  See TMEP §1209.01(c).

 

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); see, e.g., In re Polo Int’l Inc., 51 USPQ2d 1061, 1062-63 (TTAB 1999) (finding DOC in DOC-CONTROL would refer to the “documents” managed by applicant’s software rather than the term “doctor” shown in a dictionary definition); In re Digital Research Inc., 4 USPQ2d 1242, 1243-44 (TTAB 1987) (finding CONCURRENT PC-DOS and CONCURRENT DOS merely descriptive of “computer programs recorded on disk” where the relevant trade used the denomination “concurrent” as a descriptor of a particular type of operating system). 

 

“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).

 

“A mark may be merely descriptive even if it does not describe the ‘full scope and extent’ of the applicant’s goods or services.”  In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004) (citing In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1346, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001)); TMEP §1209.01(b).  It is enough if a mark describes only one significant function, attribute, or property.  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); see In re Oppedahl & Larson LLP, 373 F.3d at 1173, 71 USPQ2d at 1371.

 

Here, the applicant is applying to register the mark EVENTS.COM in color for use in connection with the following goods and services: “Computer software platform, namely, mobile applications to enable event organizers to sell tickets and registrations, process payment, print tickets and receipts, scan and validate tickets and registrations, and track daily and current event sales, and to enable event attendees to search for events, purchase tickets and registrations, and access information related to events they may be interested in; computer hardware for registration, check-in, ticket sales and validation at events, conferences, festivals, and venues; electronically encoded wristbands for registration, check-in, ticket sales and validation at events, conferences, festivals, and venues,” in IC 9; “Promoting business events, educational events, social events and live entertainment and performance events for others; providing on-site consultation and information about event registration and event management; Providing membership club services in the nature of providing rebates, incentives, and other benefits; customer loyalty and benefits program services featuring rebates, incentives, and other benefits,” in IC 35; “Providing a website featuring information about payment for event tickets; providing consultation and information about payment for event tickets and travel; payment processing services,” in IC 36; “Entertainment services, namely, arranging for ticket reservations for educational events, festivals, conferences, social events, athletic events, travel and live entertainment and performance events; providing information in the field of entertainment; providing a website featuring information about entertainment ticket reservations; providing consultation and information about entertainment ticket reservations,” in IC 41; “Providing a website featuring technology that enables users to search and register for attendance at events, conferences, charitable events, festivals, venues, business events, athletic events, educational events, social events, live entertainment and performance events and travel; Providing a website featuring non-downloadable software for event venue management, namely, software that enables event producers, promoters, and venue managers to manage booking and calendars, settle gross receipts, manage attendee and event information, promote and market events, conduct surveys and get feedback on events, and that facilitates sales of tickets to events by integration with other programs,” in IC 42; and “Online social networking in the field of live performances, events, and event tickets,” in IC 45. 

 

The proposed mark is merely descriptive because it consists of the descriptive wording “EVENTS”, combined with the top-level domain (gTLD) “.COM”.  The non-source-identifying generic top-level domain (gTLD) “.com” merely indicates an Internet address for use by commercial, for-profit organizations.  See, e.g., In re 1800Mattress.com IP LLC, 586 F.3d 1359, 1364, 92 USPQ2d 1682, 1685 (Fed. Cir. 2009); In re Hotels.com, L.P., 573 F.3d 1300, 1301, 1304, 91 USPQ2d 1532, 1533, 1535 (Fed. Cir. 2009); In re Oppedahl & Larsen LLP, 373 F.3d 1171, 1175-77, 71 USPQ2d 1370, 1373-74 (Fed. Cir. 2004); see also TMEP §§1209.03(m), 1215.01.

 

A review of the applicant’s identification of goods and services clearly indicates that the term “EVENTS” describes a feature of its goods and services.  Specifically, applicant’s IC 9 goods feature software for event organizers and computer hardware for use at events, its IC 35 services feature event promotion, IC 36 features a website for payment for event tickets, IC 41 is for entertainment services for events, IC 42 includes a website for registration of attendance at events and IC 45 includes social networking services in the fields of events and event tickets.  The term “EVENTS” is used throughout the identification of goods and services thereby supporting the position that “EVENTS” does describe a feature of the applicant’s goods and services.

 

Accordingly, registration is refused under Trademark Act Section 2(e)(1). 

 

Applicant May Respond

 

Although the applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.

 

If applicant chooses to respond to the refusal to register, then applicant must also respond to the following requirements.

 

Requirements:

 

Identification of Goods – Clarification Required:

 

The identification for mobile applications in International Class 9 is indefinite and too broad and must be clarified to specify whether the format is downloadable, recorded, or online non-downloadable.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a).  Downloadable and recorded goods are in International Class 9, whereas providing their temporary, online non-downloadable use is a service in International Class 42.  See TMEP §1402.03(d).

 

Please note:  In accordance with the abovementioned requirements, the examining attorney has indicated acceptable changes to the applicant’s identification of goods below in bold font.  Applicant may adopt the following identification of goods, if accurate:

 

Class 09:  “Computer software platform, namely, downloadable mobile applications to enable event organizers to sell tickets and registrations, process payment, print tickets and receipts, scan and validate tickets and registrations, and track daily and current event sales, and to enable event attendees to search for events, purchase tickets and registrations, and access information related to events they may be interested in; computer hardware for registration, check-in, ticket sales and validation at events, conferences, festivals, and venues; electronically encoded wristbands for registration, check-in, ticket sales and validation at events, conferences, festivals, and venues”

 

For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.  See TMEP §1402.04.

 

Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.

 

Recitation of Services – Clarification Required:

 

The identification of services is indefinite and must be clarified.  See TMEP §1402.01.  Applicant must specify the common commercial or generic name for the services.  If the services have no common commercial or generic name, applicant must describe the nature of the services as well as their main purpose, channels of trade, and the intended consumer(s). 

 

Please note:  In accordance with the abovementioned requirements, the examining attorney has indicated acceptable changes to the applicant’s recitation of services below in bold font.  Applicant may adopt the following identification of services, if accurate:

 

Class 35:  “Promoting business events, educational events, social events and live entertainment and performance events for others; providing on-site consultation and information about event registration and event management; Providing membership club services in the nature of providing rebates, incentives, and other benefits; customer loyalty for commercial, promotional and/or advertising services”

 

Class 36:  “Providing a website featuring information about payment processing for event tickets; providing consultation and information about payment for event tickets and travel; payment processing services, namely, processing of debit and credit card transaction processing services; providing cash and other rebates and incentives for credit card use as part of a customer loyalty program”

 

Class 41:  “Entertainment services, namely, arranging for ticket reservations for educational events, festivals, conferences, social events, athletic events, travel and live entertainment and performance events; providing information in the field of entertainment; providing a website featuring information about entertainment ticket reservations; providing consultation and information about entertainment ticket reservations”  [No Change Required]

 

Class 42:  “Providing a website featuring non-downloadable software that enables users to search and register for attendance at events, conferences, charitable events, festivals, venues, business events, athletic events, educational events, social events, live entertainment and performance events and travel; Providing a website featuring non-downloadable software for event venue management, namely, software that enables event producers, promoters, and venue managers to manage booking and calendars, settle gross receipts, manage attendee and event information, promote and market events, conduct surveys and get feedback on events, and that facilitates sales of tickets to events by integration with other programs”

 

Class 45:  “Online social networking in the field of live performances, events, and event tickets”  [No Change Required]   

 

For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.  See TMEP §1402.04.

 

Please note that, while the identification of services may be amended to clarify or limit the services, adding to the services or broadening the scope of the services is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the identification to include services that are not within the scope of the services set forth in the present identification.

 

Generic Color Claims Required in Color Claim and Description:

 

Generic color names must be used to describe the colors in a color claim and description, e.g., red, yellow, blue.  TMEP §807.07(a)(i)-(ii).

 

The following color claim is suggested, if accurate:  “The colors blue and black are claimed as a feature of the mark.”  TMEP §807.07(a)(i).

 

The following description is suggested, if accurate:  “The mark consists of "events.com" with "events" and "com" in black and the dot in between the two words in blue.”

 

Responding to Office Action

 

For this application to proceed toward registration, applicant must explicitly address each refusal and/or requirement raised in this Office action.  If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register.  Applicant may also have other options for responding to a refusal and should consider such options carefully.  To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements. 

 

If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end, the trademark will fail to register, and the application fee will not be refunded.  See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a), 2.209(a); TMEP §§405.04, 718.01, 718.02. 

 

If applicant has a question or amendment that does not require the payment of a fee, submission of a specimen, response to a statutory refusal or declaration signature, applicant is encouraged to email or telephone the examining attorney to expedite the processing of the application.

 

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  

 

 

/Jessica Ellinger Fathy/

Trademark Examining Attorney

Law Office 110

United States Patent and Trademark Office

(571) 272-6582

jessica.fathy@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 September 28, 2019 for

U.S. Trademark Application Serial No. 88506079

 

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. 

 

 

/Jessica Ellinger Fathy/

Trademark Examining Attorney

Law Office 110

United States Patent and Trademark Office

(571) 272-6582

jessica.fathy@uspto.g

 

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 September 28, 2019, 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.”