To: | The Ohio State University (ColsTrademarks@fbtlaw.com) |
Subject: | U.S. Trademark Application Serial No. 88571984 - THE - 0539066 |
Sent: | August 09, 2021 03:36:06 PM |
Sent As: | ecom124@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88571984
Mark: THE
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Correspondence Address: 10 WEST BROAD STREET, SUITE 2300
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Applicant: The Ohio State University
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Reference/Docket No. 0539066
Correspondence Email Address: |
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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: August 09, 2021
On May 21, 2021, action on this application was suspended pending the disposition of Opposition No. 91268922. The proceeding is suspended and will be terminated once the present application is removed from suspension and the advisory regarding the prior-filed application is withdrawn. In light of the provided consent agreement and amendments to the identifications in the present application and prior-filed application, the advisory regarding the prior-filed application is withdrawn and the file is removed from suspension. Accordingly, examination is herein resumed and the Sections 1, 2 and 45 Refusal is now made FINAL.
SECTIONS 1, 2 AND 45 REFUSAL – FAILURE TO FUNCTION – MERELY ORNAMENTAL
The size, location, dominance, and significance of the alleged mark as used on the goods are all relevant factors in determining the commercial impression of the applied-for mark. See, e.g., In re Peace Love World Live, LLC, 127 USPQ2d 1400, 1403 (TTAB 2018) (quoting In re Hulting, 107 USPQ2d 1175, 1178 (TTAB 2013)); In re Lululemon Athletica Can. Inc., 105 USPQ2d at 1687 (quoting In re Right-On Co., 87 USPQ2d 1152, 1156 (TTAB 2008)); TMEP §1202.03(a).
With respect to clothing, consumers may recognize small designs or discrete wording as trademarks, rather than as merely ornamental features, when located, for example, on the pocket or breast area of a shirt. See TMEP §1202.03(a). Consumers may not, however, perceive larger designs or slogans as trademarks when such matter is prominently displayed across the front of a t-shirt. See In re Pro-Line Corp., 28 USPQ2d at 1142; In re Dimitri’s Inc., 9 USPQ2d 1666, 1667-68 (TTAB 1988); TMEP §1202.03(a), (b), (f)(i), (f)(ii).
In this case, the submitted specimen shows the applied-for mark, THE, located directly on the upper-center area of the front of the shirt and the front portion of the hat, where ornamental elements often appear. See TMEP §1202.03(a), (b). Furthermore, the mark is displayed in a relatively large size on the clothing such that it dominates the overall appearance of the goods. As such, the applied-for mark appears to be used in a merely decorative manner that would be perceived by consumers as having little or no particular source-identifying significance.
Therefore, consumers would view the applied-for mark as a decorative or ornamental feature of the goods, rather than as a trademark to indicate the source of applicant’s goods and to distinguish them from others.
In response, applicant argues that the applied-for mark is an indicator of secondary source for other goods and services that applicant provides. However, none of the evidence provided supports a finding that the term “THE” is used as a source indicator for other goods and services. Similar to the argument that the term has acquired distinctiveness under Section 2(f), to establish that the mark acts as an indicator of secondary source, applicant must show that “THE” has been used alone as a source indicator for other goods or services. See TMEP § 1212.02(f). The TMEP notes that “[t]o show secondary source, the applicant may show… (3) non-ornamental use of the mark in commerce on other goods and services.” TMEP § 1202.03(a). Here, the evidence and arguments provided merely show that “THE” is used in conjunction with “OHIO STATE UNIVERSITY,” sometimes with emphasis on the “THE.” Such evidence is not sufficient to show that “THE”, on its own, serves as a source indicator for any other goods or services.
Further, applicant argues that In re Olin Corp, 181 U.S.P.Q. 182 presents case law that obviates the refusal. However, Olin merely discusses that the university services provided by NEW YORK UNIVERISTY are sufficient to establish secondary source and obviate a failure to function refusal for a specimen showing “NEW YORK UNIVERSITY” displayed on a shirt. Here, if the applied-for mark was THE OHIO STATE UNIVERSITY, then evidence of the educational services provided by THE OHIO STATE UNIVERSITY would be accepted as evidence of secondary source. However, here, the mark is THE and applicant has not provided any evidence of any use of THE as a non-ornamental source indicator for other goods or services.
Finally, applicant provided a number of blog posts, articles and comments as evidence of secondary source. Most of the examples show use of THE OHIO STATE UNIVERSITY as a whole, not THE on its own. The few examples that discuss THE on its own are law blogs that do not provide specific examples of non-ornamental use as an indicator of source for other goods or services.
Accordingly, the refusal is now made FINAL.
In appropriate circumstances, applicant may overcome this refusal by satisfying one of the following options:
(1) Submit a different specimen (a verified “substitute” specimen) that was in actual use in commerce at least as early as the filing date of the application (or prior to the filing of an amendment to allege use) and that shows proper trademark use for the identified goods in International Class 25. Examples of acceptable specimens that show non-ornamental use on clothing include hang tags and labels used inside a garment.
(2) Amend to the Supplemental Register, which is a second trademark register for marks not yet eligible for registration on the Principal Register, but which may become capable over time of functioning as source indicators.
(3) Claim acquired distinctiveness under Trademark Act Section 2(f) by submitting evidence that the applied-for mark has become distinctive of applicant’s goods; that is, proof that applicant’s extensive use and promotion of the mark allowed consumers now directly to associate the mark with applicant as the source of the goods.
(4) Submit evidence that the applied-for mark is an indicator of secondary source; that is, proof that the mark is already recognized as a source indicator for other goods or services that applicant sells/offers.
(5) Amend the filing basis to intent to use under Section 1(b). This option will later necessitate additional fee(s) and filing requirements.
For an overview of the response options above and instructions on how to satisfy each option online using the Trademark Electronic Application System (TEAS) form, see the Ornamental Refusal webpage.
RESPONSE GUIDELINES
Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a). Applicant may respond by providing one or both of the following:
(1) A request for reconsideration that fully resolves all outstanding requirements and refusals; and/or
(2) An appeal to the Trademark Trial and Appeal Board with the required filing fees.
TMEP §715.01; see 37 C.F.R. §2.63(b)(1)-(2).
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).
/Tara L. Bhupathi/
Examining Attorney
Law Office 124
(571) 272-5557
tara.bhupathi@uspto.gov
RESPONSE GUIDANCE