To: | Studs, Inc. (zach@klukfarber.com) |
Subject: | U.S. Trademark Application Serial No. 88550146 - STUDS - N/A |
Sent: | February 05, 2020 08:48:23 AM |
Sent As: | ecom117@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 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88550146
Mark: STUDS
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Correspondence Address:
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Applicant: Studs, Inc.
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Reference/Docket No. N/A
Correspondence Email Address: |
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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: February 05, 2020
This Office action is in response to applicant’s communication filed on January 30, 2020.
In the previous Office action dated August 28, 2019, the trademark examining attorney refused registration of the applied-for mark because it merely descriptive. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e); see TMEP §§1207.01(b) et seq. This refusal, as it pertains to Class 44, has been obviated as a result of applicant’s amendment to the Supplemental Register.
SUMMARY OF ISSUE
GENERIC REFUSAL (CLASS 14 ONLY)
Registration, in Class 14, is refused on the Supplemental Register because the applied-for mark is generic and thus incapable of distinguishing applicant’s goods. Trademark Act Sections 23(c) and 45, 15 U.S.C. §§1091(c), 1127; see TMEP §§1209.01(c) et seq. Applicant does not provide any arguments against the refusal. Rather, applicant merely amends the application to the Supplemental Register.
“A mark is generic if its primary significance to the relevant public is the class or category of goods or services on or in connection with which it is used.” TMEP §1209.01(c)(i) (citing H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 989-90, 228 USPQ 528, 530 (Fed. Cir. 1986); In re ActiveVideo Networks, Inc., 111 USPQ2d 1581, 1600 (TTAB 2014)). Determining whether a mark is generic requires a two-step inquiry:
(1) What is the genus of goods at issue?
(2) Does the relevant public understand the designation primarily to refer to that genus of goods?
In re Cordua Rests., Inc., 823 F.3d 594, 599, 118 USPQ2d 1632, 1634 (Fed. Cir. 2016) (citing H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d at 990, 228 USPQ at 530); TMEP §1209.01(c)(i).
Regarding the first part of the inquiry, the genus of the goods may be defined by an applicant’s identification of goods. See In re Cordua Rests., Inc., 823 F.3d at 602, 118 USPQ2d at 1636 (citing Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 640, 19 USPQ2d 1551, 1552 (Fed. Cir. 1991)); see also In re 1800Mattress.com IP, LLC, 586 F.3d 1359, 1361, 1363, 92 USPQ2d 1682, 1682, 1684 (Fed. Cir. 2009). In this case, the application identifies the goods as “earrings; pierced earrings”, which adequately defines the genus at issue.
Regarding the second part of the inquiry, the relevant public is the purchasing or consuming public for the identified goods. Sheetz of Del., Inc. v. Doctor’s Assocs. Inc., 108 USPQ2d 1341, 1351 (TTAB 2013) (citing Magic Wand Inc. v. RDB Inc., 940 F.2d at 640, 19 USPQ2d at 1553). In this case, the relevant public comprises ordinary consumers who purchase applicant’s goods, because there are no restrictions or limitations to the channels of trade or classes of consumers. The attached evidence from four different dictionaries, Merriam-Webster Dictionary, The Free Dictionary, Collins Dictionary, and Lexico powered by Oxford Dictionary shows that the wording “STUDS” in the applied-for mark means an earring or item of jewelry attached to a pin that passes through a piercing in the and thus the relevant public would understand this designation to refer primarily to that genus of goods because applicant’s goods are exclusively earrings and pierced earrings. Moreover, the attached evidence from applicant’s own website demonstrates the wording “STUDS” is used to refer to applicant’s earrings. Applicant’s website categorizes applicant’s jewelry into eight categories, one of which is “STUD”. Finally, please see the attached evidence from several online jewelry retailers, macys.com, kay.com, claires.com, kohls.com, and nordstrom.com that show STUDS refer to earrings. The plural of a generic term is generally still generic as pluralization usually does not alter the meaning of the term beyond making it plural. See In re Cordua Rests., Inc. , 823 F.3d 594, 603, 118 USPQ2d 1632, 1637 (Fed. Cir. 2016) (citing In re Belgrade Shoe, Co. , 411 F.2d 1352, 1353, 162 USPQ 227, 227 (C.C.P.A. 1969); Wilson v. Delauney , 245 F.2d 877, 878, 114 USPQ 339, 341 (C.C.P.A. 1957)); TMEP §1209.01(c)(1).
Thus, the generic refusal pursuant to Trademark Act Sections 23(c) and 45 is made because the mark is generic of applicant’s goods. Although applicant’s mark has been refused registration, applicant may respond to the refusals by submitting evidence and arguments in support of registration. However, applicant cannot overcome this refusal by submitting a claim of acquired distinctiveness under Trademark Act Section 2(f). See 15 U.S.C. §1052(f). Such a claim would be insufficient because “generic terms cannot be rescued by proof of distinctiveness or secondary meaning no matter how voluminous the proffered evidence may be.” Royal Crown Co. v. Coca-Cola Co., 892 F.3d 1358, 1370, 127 USPQ2d 1041, 1048 (Fed. Cir. 2018) (quoting In re Northland Aluminum Prods., 777 F.2d 1556, 1558, 227 USPQ2d 961, 962 (Fed. Cir. 1985)); see TMEP §1212.02(i).
PARTIAL ABANDONMENT ADVISORY
The stated specimen requirements above does not bar registration for the services in International Class 44. Therefore, if applicant does not respond to this Office action within the six-month period for response, only the goods in International Class 14 will be deleted from the application. See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).
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.
Biftu, Beniam
/Ben Biftu/
Trademark Examining Attorney
United States Patent & Trademark Office
Law Office 117
571-272-1525
bbiftu@uspto.gov
RESPONSE GUIDANCE