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 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 08, 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.
SUMMARY OF ISSUES:
- Section 2(e)(1) Refusal – Merely Descriptive
- Prior-Filed Application
SEARCH OF OFFICE’S DATABASE OF MARKS
The trademark examining attorney has searched the USPTO’s database of registered and pending marks and has found no similar registered marks that would bar
registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d). However, a mark in a
prior-filed pending application may present a bar to registration of applicant’s mark.
SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
Registration is refused because the applied-for mark merely describes a characteristic 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.
A mark is merely descriptive if it describes an ingredient, quality, characteristic, function,
feature, purpose, or use of an applicant’s services. 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)).
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.
Applicant has applied to register the mark THE INVESTMENT BROTHERS (in standard characters) for “Providing information in the field of real estate via the
Internet” in International Class 36.
Terms that describe the provider of a service may also be merely descriptive of the product and/or
service. See In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1301, 102 USPQ2d 1217, 1220 (Fed. Cir. 2012) (affirming Board’s finding
that NATIONAL CHAMBER was merely descriptive of online service providing directory information for local and state chambers of commerce and business and regulatory data analysis services to promote
the interest of businessmen and businesswomen); In re Major League Umpires, 60 USPQ2d 1059, 1060 (TTAB 2001) (holding MAJOR LEAGUE UMPIRE merely descriptive of clothing, face
masks, chest protectors and shin guards); TMEP §1209.03(q).
Here, the mark is “THE INVESTMENT BROTHERS”, which describes who is providing the services. The attached Internet dictionary evidence from The
American Heritage Dictionary of the English Language shows that an “investment” is “property or another possession acquired for future financial return or benefit.”
Thus, the term directly describes a characteristic of the services, in that applicant provides information about real estate property which can be used as an investment.
Furthermore, business type designations and abbreviations such as “Corporation,” “Inc.,” “Company,”
“LLC,” and “Ltd.” or family business designations such as “& Son’s” or “Bros.” merely indicate applicant’s business type or structure and generally have no source-indicating capacity. TMEP §1213.03(d); see, e.g., Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U.S. 598, 602-03 (1888);
In re Piano Factory Grp., Inc., 85 USPQ2d 1522, 1526 (TTAB 2006); In re Patent & Trademark Servs., Inc., 49 USPQ2d 1537, 1539-40 (TTAB 1998).
And finally, adding the term “the” to a descriptive or generic term generally does not add any
source-indicating significance or otherwise affect the term’s descriptiveness or genericness. See In re The Place Inc., 76 USPQ2d 1467, 1468
(TTAB 2005) (holding THE GREATEST BAR merely descriptive of restaurant and bar services; “the definite article THE . . . add[s] no source-indicating significance to the mark as a whole”); Conde Nast Publ’ns Inc. v. Redbook Publ’g Co., 217 USPQ 356, 357, 360 (TTAB 1983) (holding THE MAGAZINE FOR YOUNG WOMEN a “common descriptive or ‘generic’ name of a class or type of
magazine” and incapable of indicating source; “[t]he fact that the slogan also includes the article ‘The’ is insignificant. This word cannot serve as an indication
of origin, even if applicant’s magazine were the only magazine for young women.”); In re The Computer Store, Inc., 211 USPQ 72, 74-75 (TTAB 1981) (holding THE COMPUTER STORE
merely descriptive of, and the common descriptive name for, computer-related services); see also In re G. D. Searle & Co., 143 USPQ 220 (TTAB 1964),
aff’d, 360 F.2d 1966, 149 USPQ 619 (C.C.P.A. 1966) (holding “THE PILL” a common descriptive name for pharmaceutical preparations in tablet form, and thus does not serve as an
indicator of source or origin in applicant).
In sum, applicant’s mark is merely descriptive because it describes a characteristic of applicant’s services and consumers are likely to perceive the proposed mark as describing
a characteristic of the services rather than the source of the services.
Accordingly, registration is refused pursuant to Section 2(e)(1) of the Trademark Act.
Applicant should note the following potential ground for refusal.
PRIOR-FILED APPLICATION
The filing date of pending U.S. Application Serial No. 88293599 precedes applicant’s filing date. See
attached referenced application. If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of
confusion between the two marks. See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, upon receipt of applicant’s response to this Office action, action
on this application may be suspended pending final disposition of the earlier-filed referenced 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.
Although applicant’s mark has been refused registration, applicant may respond to the refusal and potential
refusal by submitting evidence and arguments in support of registration.
RESPONSE GUIDELINES
For this application to proceed, applicant must explicitly address each refusal and potential refusal 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.
Please call or email the assigned trademark examining attorney with questions about this Office
action. Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide
applicant with additional explanation about the refusal and potential refusal in this Office action. See TMEP §§705.02, 709.06. Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application
record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
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 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
Cameron McBride
/Cameron McBride/
Examining Attorney - Trademarks
Law Office 106
(571) 272-0542
Cameron.McBride@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.
