To: | Audio Enhancement, Inc. (cjones@strongandhanni.com) |
Subject: | U.S. Trademark Application Serial No. 88512005 - AUDIO ENHANCEMENT - 007694.00108 |
Sent: | October 05, 2019 08:13:16 AM |
Sent As: | ecom108@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88512005
Mark: AUDIO ENHANCEMENT
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Correspondence Address:
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Applicant: Audio Enhancement, Inc.
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Reference/Docket No. 007694.00108
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: October 05, 2019
Summary of Issues:
Section 2(e)(1) Refusal – Mark Is Merely Descriptive
Registration is refused because the applied-for mark merely describes a feature, characteristic or purpose 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.
In this case, applicant has applied to register the mark AUDIO ENHANCEMENT for “Intercoms; paging equipment; cameras; warning bells and notifications; signal bells and notifications; visual messaging; microphones; speakers; receivers; transmitters; monitors; batteries; servers; emergency notification system comprised of a data processor and a user input device for connecting the data processor to an emergency response entity through a communication network and allowing audio and data communication between the processor and the entity; audible and visible notification appliances, strobes, sirens, bells, horns, and speakers; sound transmitting apparatus; sound alarms; sound projectors and amplifiers; assistive listening device not for medical purposes; computer hardware and peripheral devices and computer software for logging, monitoring and alerting in the event of bullying, fighting, weapons, or medical emergencies; building security systems comprising software and hardware for providing logging, monitoring, picture, video, alarm status and other information to a remote station; communications software for connecting users of the alerting software using both cloud and on premise networks; two-way intercoms; electronic bells and notification system comprised of electronic warning bells, a data processor and a user input device for connecting the data processor to an emergency response entity through a communication network and allowing audio and data communication between the processor and the entity; communications servers” in International Class 09.
The determination of whether a mark is merely descriptive is made in relation to an applicant’s goods, 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 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).
The attached evidence from Lexico.com by Oxford Dictionary shows the word AUDIO means “sound, especially when recorded, transmitted, or reproduced.” Meanwhile, applicant’s goods include “sound transmitting apparatus, sound alarms, sound projectors and amplifiers.” Moreover, applicant’s goods are “allowing audio and data communication,” as specified in the identification. Therefore, as applied to the respective goods, the wording AUDIO immediately informs consumers that applicant’s goods are used to record or transmit sound as a key feature or purpose of the goods. Terms that describe the function or purpose of a product or 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 attached dictionary evidence also shows the word ENHANCEMENT means “an increase or improvement in quality, value, or extent.” As such, the wording ENHANCEMENT merely describes a feature or purpose of applicant’s goods as being used to increase or improve in value or quality. When combined, the wording AUDIO ENHANCEMENT immediately informs consumers that applicant’s goods are used to improve sound communication. The words AUDIO and ENHANCEMENT are therefore individually descriptive of a feature, characteristic or purpose of applicant’s goods, and the composite result remains descriptive.
Generally, if the individual components of a mark retain their descriptive meaning in relation to the goods, the combination results in a composite mark that is itself descriptive and not registrable. In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1516 (TTAB 2016) (citing In re Tower Tech, Inc., 64 USPQ2d 1314, 1317-18 (TTAB (2002)); TMEP §1209.03(d); see, e.g., Apollo Med. Extrusion Techs., Inc. v. Med. Extrusion Techs., Inc., 123 USPQ2d 1844, 1851 (TTAB 2017) (holding MEDICAL EXTRUSION TECHNOLOGIES merely descriptive of medical extrusion goods produced by employing medical extrusion technologies); In re Cannon Safe, Inc., 116 USPQ2d 1348, 1351 (TTAB 2015) (holding SMART SERIES merely descriptive of metal gun safes); In re King Koil Licensing Co., 79 USPQ2d 1048, 1052 (TTAB 2006) (holding THE BREATHABLE MATTRESS merely descriptive of beds, mattresses, box springs, and pillows).
Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the goods and/or 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 and the composite result are descriptive of applicant’s goods and do not create a unique, incongruous, or nondescriptive meaning in relation to the goods. Specifically, the term AUDIO merely describes a feature or purpose of applicant’s goods as being used for audio/sound communication, and the term ENHANCEMENT merely describes a feature or purpose of applicant’s goods as being used to increase or improve in value or quality. When combined, the wording AUDIO ENHANCEMENT immediately informs consumers that applicant’s goods are used to improve the quality of sound. In simple words, applicant’s goods are used to improve the quality of sound. Indeed, the attached evidence from applicant’s website, http://www.audioenhancement.com/audio/, states that applicant’s speakers “allow the teacher's voice to be clearly heard when spoken into the wearable microphone.”
Accordingly, because the applied-for mark AUDIO ENHANCEMENT is merely descriptive of the applicant’s goods, registration is refused under Trademark Act Section 2(e)(1).
Response options: Applicant may respond to the stated refusal by submitting evidence and arguments against the refusal. In addition, applicant may respond by doing one of the following:
The application record indicates that applicant has used its mark for a long time; therefore, applicant has the option to amend the application to assert a claim of acquired distinctiveness under Trademark Act Section 2(f). See 15 U.S.C. §1052(f); TMEP §1212.05.
To amend the application to 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) and submit 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. This statement must be verified 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).
(1) Use of the registration symbol ® with the registered mark in connection with the designated goods and/or services, which provides public notice of the registration and potentially deters third parties from using confusingly similar marks.
(2) Inclusion of the registered mark in the USPTO’s database of registered and pending marks, which will (a) make it easier for third parties to find it in trademark search reports, (b) provide public notice of the registration, and thus (c) potentially deter third parties from using confusingly similar marks.
(3) Use of the registration by a USPTO trademark examining attorney as a bar to registering confusingly similar marks in applications filed by third parties.
(4) Use of the registration as a basis to bring suit for trademark infringement in federal court, which, although more costly than state court, means judges with more trademark experience, often faster adjudications, and the opportunity to seek an injunction, actual damages, and attorneys’ fees and costs.
(5) Use of the registration as a filing basis for a trademark application for registration in certain foreign countries, in accordance with international treaties.
See 15 U.S.C. §§1052(d), 1091, 1094; J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition §§19:33, 19:37 (rev. 4th ed. Supp. 2017).
Applicant may submit a disclaimer in the following format:
No claim is made to the exclusive right to use “AUDIO” apart from the mark as shown.
TMEP §1213.08(a)(i).
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
Attorney Bar Information and Statement
To provide bar information. Applicant’s attorney should respond to this Office action by using the appropriate TEAS response form and provide his or her bar information in the “Attorney Information” page of the form, within the bar information section. See 37 C.F.R. §2.17(b)(1)(ii). Bar information provided in any other area of the form will be viewable by the public in USPTO records.
Requirement – Identification of Goods
The wording “notifications” in “warning bells and notifications” and “signal bells and notifications” in the identification of goods is indefinite and must be clarified because the exact nature of the goods is unclear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend this wording to specify the common commercial or generic name of the goods. See TMEP §1402.01. If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses. See id.
The wording “visual messaging” in the identification of goods is indefinite and must be clarified because the exact nature of the goods is unclear and because it could identify goods and services in several international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. For example, this wording could encompass downloadable computer software for visual messaging in International Class 09 and providing online non-downloadable computer software for visual messaging in International Class 42. Therefore, applicant must amend the identification to specify the exact nature of the goods or services.
The wording “speakers; receivers; transmitters; monitors; servers; bells; horns” is indefinite and must be clarified because it does not identify the goods with sufficient specificity. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend this wording to specify the types of speakers, receivers, transmitters, monitors, servers, bells and horns with which the mark will be used.
The wording “audible and visible notification appliances” is indefinite and must be clarified because the exact nature of the goods is unclear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend the identification to specify the type of audible and visible notification appliances.
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
Applicant may adopt the following identification, if accurate [changes are shown in bold typeface]:
CLASS 09 – “Intercoms; paging equipment; cameras; warning bells and notifications in the nature of _____ [specify]; signal bells and notifications in the nature of _____ [specify]; downloadable computer software for visual messaging; microphones; _____ [specify type of speakers, e.g., audio] speakers; receivers for _____ [indicate type, e.g., telephone, audio, video]; ______ [specify type of transmitters, e.g., radio, telephone] transmitters; ______ [specify type of monitors, e.g., baby] monitors; batteries; ______ [specify type of servers, e.g., Internet] servers; emergency notification system comprised of a data processor and a user input device for connecting the data processor to an emergency response entity through a communication network and allowing audio and data communication between the processor and the entity; audible and visible notification appliances, namely, sirens, electronic warning bells, electronic warning horns, and audio speakers; sound transmitting apparatus; sound alarms; sound projectors and amplifiers; assistive listening device not for medical purposes; computer hardware and peripheral devices and computer software for logging, monitoring and alerting in the event of bullying, fighting, weapons, or medical emergencies; building security systems comprising downloadable software and hardware for providing logging, monitoring, picture, video, alarm status and other information to a remote station; downloadable communications software for connecting users of the alerting software using both cloud and on premise networks; two-way intercoms; electronic bells and notification system comprised of electronic warning bells, a data processor and a user input device for connecting the data processor to an emergency response entity through a communication network and allowing audio and data communication between the processor and the entity; communications servers;” and
CLASS 11 – “Flashing strobe light apparatus.”
Applicant may amend the identification to clarify or limit the goods and services, but not to broaden or expand the goods and services beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Generally, any deleted goods and services may not later be reinserted. See TMEP §1402.07(e).
Advisory – Multiple-Class Application Requirements
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). Again, application identifies goods that could be classified in at least two international classes; however, applicant submitted a fee sufficient for one international class. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class. See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a). See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(b) application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
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
/Miroslav Novakovic/
RESPONSE GUIDANCE