Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  May 27, 2020

 

This Office action is in response to applicant’s communication filed on May 1, 2020.  After reviewing the response the examining attorney has determined the following.

 

Section 2(e)(1) Refusal – Proposed Mark is Merely Descriptive is Maintained & Made FINAL

The refusal under Trademark Act Section 2(e)(1) is now made FINAL for the reasons set forth below.  See 15 U.S.C. §1052(e)(1); 37 C.F.R. §2.63(b).

 

In review, the applicant has applied to register the proposed mark MAJOR LEAGUE FOOTBALL for “Entertainment in the nature of football games; Organisation of sports events in the field of football,” in International Class 41.

 

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods and/or 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)). 

 

Further, terms that describe the provider of a product or 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).

 

Again, in the present case, the wording “major league” is defined as “a league of principal importance in professional sports, such as baseball, basketball, football, or ice hockey.”  See the nine (9) additional representative dictionary definitions attached.  Further, based on the recitation of services and the attached excerpt from the applicant’s website alone, it is clear that the applicant’s services will feature “entertainment in the nature of football games and organization of sports events in the field of football,” all at the professional level.  Importantly, the recitation of services is legally broad enough to include providing and organizing the football games for a league of principal importance.  See the attached excerpt from the applicant’s website describing the intended services.  Accordingly, the wording “major league football” merely and unambiguously describes both a feature, characteristic and/or the provider of the listed services.

 

Importantly, two major reasons for not protecting descriptive marks are (1) to prevent the owner of a descriptive mark from inhibiting competition in the marketplace and (2) to avoid the possibility of costly infringement suits brought by the trademark or service mark owner.  In re Abcor Dev. Corp., 588 F.2d 811, 813, 200 USPQ 215, 217 (C.C.P.A. 1978); TMEP §1209.  Businesses and competitors should be free to use descriptive language when describing their own goods and/or services to the public in advertising and marketing materials.  See In re Styleclick.com Inc., 58 USPQ2d 1523, 1527 (TTAB 2001).

 

In response to the initial refusal, the applicant simply stated the following:

 

We respectfully disagree that the proposed mark is merely descriptive. However, without prejudice, the applicant will consider amending to the Supplemental Register upon use in commerce, which the applicant cannot do at this time due to the ongoing COVID-19 pandemic.

 

The applicant’s conclusion aside, for the reasons discussed above, it is certain that the applied-for mark is merely descriptive of the applicant’s listed services.  It is unfortunate that the current applicant may have difficulty providing evidence of use in order to amend to seek registration on the Supplemental Register.  Also, the examining attorney is not unsympathetic to the troubles that the COVID-19 pandemic has surely had on many trademark applicants.  However, at this time there are no legal provisions, statutes and/or Acts that allow additional time for an applicant to commence use in order to amend to the Supplemental register.

 

Accordingly, the applicant is reminded that mark in an application under Trademark Act Section 1(b) is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use under 37 C.F.R. §2.76 has been filed.  37 C.F.R. §§2.47(d), 2.75(b); TMEP §§815.02, 1102.03.  When a Section 1(b) application is successfully amended to the Supplemental Register, the application effective filing date will be the date applicant met the minimum filing requirements under 37 C.F.R. §2.76(c) for the amendment to allege use.  TMEP §§816.02, 1102.03; see 37 C.F.R. §2.75(b).

 

Accordingly, for the reason discussed above, and those noted in the original Office action, the refusal to register the proposed mark under Trademark Act Section 2(e)(1) because the applied-for mark is merely descriptive is Maintained & Made FINAL.

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How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

If the applicant has any questions or needs assistance with the present application, please telephone the assigned examining attorney.

 

 

/Jeffery C. Coward/

Trademark Examining Attorney

Law Office 106

Phone: (571) 272-9148

E-mail: jeffery.coward@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 May 27, 2020 for

U.S. Trademark Application Serial No. 88555345

 

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. 

 

 

/Jeffery C. Coward/

Trademark Examining Attorney

Law Office 106

Phone: (571) 272-9148

E-mail: jeffery.coward@uspto.gov

 

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 May 27, 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.”