To: | Fit and Fun Playscapes, LLC (nixonptomail@nixonvan.com) |
Subject: | U.S. Trademark Application Serial No. 88519094 - SUPER STICKERS - sld-6925-13 |
Sent: | October 10, 2019 05:37:24 PM |
Sent As: | ecom125@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88519094
Mark: SUPER STICKERS
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Correspondence Address:
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Applicant: Fit and Fun Playscapes, LLC
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Reference/Docket No. sld-6925-13
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 10, 2019
SEARCH OF OFFICE’S DATABASE OF MARKS
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).
SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
“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).
Applicant’s mark is SUPER STICKERS for “Stickers; Stencils” and “Games, namely, preprinted portable sheets for sensory play, stress relief, strengthening exercise, relaxation, recess game play; games, namely, preprinted playmats for sensory play, stress relief, strengthening exercise, relaxation, recess game play; activity sets in the nature of adhesives for sensory play, stress relief, strengthening exercise, relaxation, recess game play; activity sets in the nature of stencils for sensory play, stress relief, strengthening exercise, relaxation, recess game play.”
The attached evidence from Merriam-Webster Dictionary indicates that “SUPER” means “of high grade or quality” and “STICKER” means “a slip of paper with adhesive back that can be fastened to a surface.” “STICKER” directly describes a purpose of applicant’s goods, which are stickers.
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/or services and do not create a unique, incongruous, or nondescriptive meaning in relation to the goods and/or services. Specifically, nothing about applicant’s mark indicates anything other than a merely descriptive meaning.
All of this evidence demonstrates that SUPER STICKERS would likely be understood by consumers to refer to stickers that are described as of a high quality. Accordingly, the proposed mark SUPER STICKERS is merely descriptive, and registration is properly refused on the Principal Register under Section 2(e)(1) of the Trademark Act.
SUPPLEMENTAL REGISTER ADVISORY
(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).
IDENTIFICATION OF GOODS REQUIRES AMENDMENT
The wording “preprinted portable sheets; activity sets in the nature of adhesives” in the identification of goods for International Class 28 must be clarified because it is indefinite and the nature of the goods is unclear. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.
Applicant may substitute the following wording, if accurate:
Class 16: Stickers; Stencils
Class 28: Games, namely, preprinted portable sheets in the nature of {specify, e.g., paper printed with patterns for use in playing games} for sensory play, stress relief, strengthening exercise, relaxation, recess game play, parlor game play; games, namely, preprinted playmats for sensory play, stress relief, strengthening exercise, relaxation, recess game play, parlor game play; activity sets in the nature of adhesive {specify, e.g., toys} for sensory play, stress relief, strengthening exercise, relaxation, recess game play, parlor game play
Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended. See TMEP §1402.06(a)-(b). The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification. TMEP §§1402.06(b), 1402.07(a)-(b). Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted. TMEP §1402.07(e).
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.
Questions: 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(s) and/or requirement(s) 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 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
/Rachael Dickson/
Rachael Dickson
Trademark Examining Attorney
Law Office 125
Phone: 571-272-5353
E-mail: rachael.dickson@uspto.gov
RESPONSE GUIDANCE