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:  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.

 

However, for the reasons set forth below, registration is refused under Trademark Act Sections 23(c) and 45 because the proposed mark is generic and not registrable on the Supplemental Register.  See 15 U.S.C. §§1091(c), 1127; 37 C.F.R. §2.63(b); TMEP §1209.01(c).

 

SUMMARY OF ISSUE

 

• Generic Refusal (Class 14 Only)

 

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 generic term is a common name that the relevant public uses or understands primarily as referring to the category or genus of the goods in question.  In re Nordic Naturals, Inc., 755 F.3d 1340, 1342, 111 USPQ2d 1495, 1497 (Fed. Cir. 2014); 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); see TMEP §1209.01(c).  Generic terms are by definition incapable of indicating a particular source of goods and cannot be registered as trademarks or service marks.  In re Cordua Rests., Inc., 823 F.3d 594, 599, 118 USPQ2d 1632, 1634 (Fed. Cir. 2016) (quoting In re Merrill Lynch, Pierce, Fenner, & Smith, Inc., 828 F.2d 1567, 1569, 4 USPQ2d 1141, 1142 (Fed. Cir. 1987)); see TMEP §1209.01(c).  Registering generic terms “would grant the owner of [a] mark a monopoly, since a competitor could not describe his goods as what they are.”  In re Merrill Lynch, Pierce, Fenner, & Smith, Inc., 828 F.2d at 1569, 4 USPQ2d at 1142.

 

“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

• 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 February 05, 2020 for

U.S. Trademark Application Serial No. 88550146

 

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. 

 

 

Biftu, Beniam

/Ben Biftu/

Trademark Examining Attorney

United States Patent & Trademark Office

Law Office 117

571-272-1525

bbiftu@uspto

 

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 February 05, 2020, 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.”