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:  November 25, 2019

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SUMMARY OF ISSUES:

• SECTION 2(d) REFUSALS—LIKEIHOOD OF CONFUSION
• IDENTIFICATIONS OF GOODS AND SERVICES
• DISCLAIMER

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

THIS PARTIAL REFUSAL APPLIES ONLY TO THE GOODS AND SERVICES SPECIFIED THEREIN

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 2594034, 4395419, 4391640, 4702350, 4702351, 4517955, and 4517956.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties.  See 15 U.S.C. §1052(d).  Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  Only those factors that are “relevant and of record” need be considered.  M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018). 

 

Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis:  (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services.  See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.

 

The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer.  See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).  Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant.  TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).

 

COMPARISON OF THE MARKS

 

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v).  “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.”  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).

 

When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.”  Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b).  The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks.  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b).

Marks must be compared in their entireties and should not be dissected; however, a trademark examining attorney may weigh the individual components of a mark to determine its overall commercial impression.  In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (“[Regarding the issue of confusion,] there is nothing improper in stating that . . . more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties.” (quoting In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985)). 

 

In this case, applicant’s mark is TAMPA BAY SHARKS.  Registrants’ marks are NEW YORK SHARKS WOMEN'S PROFESSIONAL FOOTBALL TEAM and design with NEW YORK and WOMEN'S PROFESSIONAL FOOTBALL TEAM disclaimed, SHARKK, SHARKK and design, JACKSONVILLE SHARKS with JACKSONVILLE disclaimed, and JACKSONVILLE SHARKS and design with JACKSONVILLE disclaimed. 

 

When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services.  In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii).  Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed.  In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).

 

Disclaimed matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant when comparing marks.  In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).

 

In this case, the terms NEW YORK and WOMEN'S PROFESSIONAL FOOTBALL TEAM disclaimed and the term JACKSONVILLE are disclaimed in the registered marks in U.S. Registration Nos. 2594034, 4517955, and 4517956 rendering the term SHARKS the dominant feature of these marks.

 

Likewise, matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant in relation to other wording in a mark.  See Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1824-25 (TTAB 2015) (citing In re Chatam Int’l Inc., 380 F.3d 1340, 1342-43, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004)).

 

In the present case, the attached evidence shows that the wording TAMPA BAY in the applied-for mark is merely descriptive of or generic for applicant’s goods and services.  See the attached evidence. Thus, this wording is less significant in terms of affecting the mark’s commercial impression, and renders the wording SHARKS the more dominant element of the mark. 

 

The dominant feature of applicant’s mark is essentially a phonetic equivalent to registrant’s marks in U.S. Registration No. 4395419, 4391640, 4702350, 4702351 and thus sound similar.  Similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar.  In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv).

 

Finally, the marks all share the identical dominant feature, i.e., SHARKS or SHARKK.  Thus, the marks are confusingly similar.

 

COMPARISON OF THE GOODS AND SERVICES

 

The goods and/or services are compared to determine whether they are similar, commercially related, or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).

 

The compared goods and/or services need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

Applicant’s goods and services, in relevant part, are “cell phone covers; computer mouse pads; Entertainment services in the nature of professional football games and exhibitions; arranging and conducting athletic competitions, namely, professional football games.” 

 

Registrants’ goods and services are:

 

“Computer related components and accessories, namely, tablet and smart phone case covers”

 

“computer mouse pads”

 

“Entertainment services in the nature of women's professional football games and exhibitions”

 

“Entertainment services, namely, organizing and presenting men's professional football games before live audiences and on television, radio and other media.”

 

When analyzing an applicant’s and registrant’s goods and/or services for similarity and relatedness, that determination is based on the description of the goods and/or services in the application and registration at issue, not on extrinsic evidence of actual use.  See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)). 

 

In this case, some of registrants’ and applicant’s goods in the application and registrations are identical, e.g., computer mouse pads.  Therefore, it is presumed that the channels of trade and class of purchasers are the same for these goods.  See Cai v. Diamond Hong, Inc., __ F.3d __, 27 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)).  Thus, this portion of applicant’s and registrant’s goods are related.  

 

In this case, the application use broad wording to describe some of the goods such as, cell phone covers, which presumably encompasses all goods of the type described, including registrant’s more narrow smart phone covers.  See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015).  Thus, applicant’s and registrant’s goods are legally identical.  See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).

 

Additionally, the goods and services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.”  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).  Thus, applicant’s and registrants’ goods and services are related.

 

Moreover, registrants’ and applicant’s services both include professional football games.

 

Thus, the goods and services are closely related.

 

There is a substantial likelihood that consumers will be confused as to the source of registrants’ and applicant’s goods and services based upon the similarity of the marks and goods and services.  Therefore, registration is refused based upon a finding of a likelihood of confusion between registrants’ and applicant’s marks and goods and services. 

 

Applicant should also note the following. 

 

PRIOR-FILED APPLICATIONS

 

The filing dates of pending U.S. Application Serial Nos. 88176598, 88183418, 88188095, 88188108, 88201514, 88292773, 88308303, 88530749, and 88534263, precede applicant’s filing date.  See attached referenced applications.  If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced applications.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusals by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusals, applicant must also respond to the requirements set forth below.

 

IDENTIFICATIONS OF GOODS AND SERVICES

 

As an initial matter, several of the applicant’s identified goods and services are misclassified into one class.  Applicant must reclassify all of these goods and services and comply with the multiple-class application requirements stated below.  Additionally, certain wording in the identification of goods and services is indefinite and overly broad, and therefore could include a wide array of goods and services, including goods and services found in other international classes, as indicated below.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend the identification to specify the common commercial or generic name of the goods and services.  See TMEP §1402.01.  If the services have no common commercial or generic name, applicant must describe or explain the nature of the goods and services using clear and succinct language.  See id.  More specifically, the wording “sporting activities, namely, football skills competitions and football showcases” is indefinite as to the overall nature of the services provided since the specific activity performed has not been clearly described in definite terms.  Additionally, the applicant’s reference to video games software and computer game software is indefinite since this entry does not specify whether these are downloadable or pre-recorded goods in 009 or non-downloadable services in 041.  Applicant’s entry pertaining to stuffed animals and toy guitars also require clarification since stuffed animals can refer to taxidermied animals as a subtype of “sporting goods” without the qualifying wording “toy” and the wording toy guitars could refer to musical instruments found in class 015 unless for model purposes.  As such, applicant must amend the identification of goods and services to properly classify and identify each of the goods and services provided.

 

Applicant may substitute the following wording, if accurate: 

 

International Class 009

 

Downloadable software in the nature of mobile applications for displaying information relating to football exhibitions, football schedules, media guides, audio and visual recordings relating to football; football helmets; protective helmets for sports; sports helmets; cell phone covers; magnetically encoded charge cards; decorative magnets; prerecorded compact discs and DVDs featuring the sport of football; downloadable video games software and downloadable computer game software; computer mouse pads; sunglasses, eyeglass cases; downloadable ring tones via the internet and wireless devices; downloadable graphics featuring content relating to football for use on computers and mobile phones and downloadable music files via a global computer network and wireless devices; decorative refrigerator magnets; video game cartridges and discs and computer game tapes; video game discs and computer game discs; video game cassettes and computer game cassettes; video game cartridges and computer game cartridges; video game CD-roms and computer game CD-roms; cinematographic and television films, namely, motion picture films featuring football;

 

International Class 014

 

Jewelry, watches, clocks, earrings, tie pins, bracelets, necklaces, charms for jewelry; rings being jewelry, collectible coins, commemorative coins, non-monetary coins of precious metal, pendants and key chains made of precious metal, charms for jewelry in precious metals or coated therewith, costume jewelry, cuff links, tie clips, decorative boxes made of precious metal, jewelry charms, key chains of precious metals, lapel pins, medals, precious metal trophies;

 

International Class 016

 

Posters; calendars; pictorial prints; series of books relating to football; magazines relating to football; stickers; bumper stickers; printed tickets to sports games and events; souvenir programs for sports events; sports trading cards; notepads; picture postcards; art pictures; stationery; pens and pencils; printed collectible trading cards; collectible trading cards and memorabilia holders specially adapted for holding collectible trading cards; cardboard and paper hangtags; packaging, namely, blister cards, paper for wrapping and packaging; collector albums for sticker collectables; sticker albums; collectable printed photographs; photo albums; photographs; framed art pictures; labels, namely, printed paper labels; folders; paper place mats; paper table mats; paper napkins; paper tablecloths; paper table linens; paper lunch bags; greeting cards; pictures; decals; temporary tattoo transfers; coloring books; children's activity books; notebooks; memo pads; date books; address books; agenda books; markers; pencil sharpeners; pencil cases; rubber stamps; stamp pads; chalk; paper banners; printed paper signs for doors; drawing rulers; erasers, rubber erasers; chalk erasers; blackboard erasers; decorative decals for vehicle windows; vinyl static cling decals relating to football, namely, decals on which football team names, logos, uniforms or events are printed for affixation to windows and windshields; lithographs; paper party bags; stencils for tracing designs onto paper; paper gift wrap; paper cake decorations; paper; indoor ornaments of paper, namely, party ornaments of paper;

 

International Class 025

 

Clothing, namely, tops and bottoms as clothing; headwear; sports caps and hats; t-shirts; shirts; sweatshirts; shorts; tank tops; sweaters; pants; jackets; golf shirts; knit shirts; jerseys; wristbands as clothing; warm up suits; gloves; ties as clothing; cloth bibs; sleepwear, namely, bathrobes and pajamas; underwear; socks; footwear, namely, sneakers, slippers, flip flops; scarves; bandannas; swimwear; Halloween and masquerade costumes;

 

International Class 026

 

Ornamental novelty pins;

 

International Class 028

 

Toys and sporting goods, namely, plush toys, stuffed toy animals, toy action figures, toy action figure accessories therefor, cases for action figures, playsets for use with action figures, toy vehicles, dolls, sports balls, golf bags, golf club covers, footballs, board games relating to football, playing cards, jigsaw puzzles, billiard balls, dart boards, toy miniature helmets, toy helmets, toy foam novelty items, namely, foam fingers and hands, hand-held units for playing electronic game other than those adapted for use with an electronic external display screen or monitor, tabletop action skill games; construction toys, Christmas tree decorations; toy spinning tops; arcade games, kites, bobble-head dolls, puppets, card games, toy model guitars, toy water guns, doll furniture, party favors in the nature of crackers and noisemakers, skateboards, toy scooters, paper party favors;

 

International Class 035

 

mail order, on-line retail store services and mail order catalog services, all featuring general consumer merchandise related to sports and sports teams;  Subscription to a television channel, namely, continuing subscription video program in the field of sports broadcast over the internet and a continuing subscription audio program in the field of football broadcast over the internet;

 

International Class 038

 

Television broadcasting services; television transmission services; cable television broadcasting; radio broadcasting; broadcasting programming on the Internet; information transmission via electronic communications networks; transmission of information through video communication systems; communication services, namely, audio and video broadcasting; broadcasting services and provision of telecommunication access to video and audio content provided via a video on demand service via the Internet and television; streaming of audio material on the Internet; streaming of video material on the Internet; telecommunication services, namely, transmission of podcasts; electronic delivery of images and photos via a global computer network; providing multiple-user access to a global computer information network for the purpose of participating in interactive polling in the field of football; wireless communications services, namely, transmission of information, namely, text, graphics, data, and entertainment information to mobile phones; mobile media services in the nature of electronic transmission of entertainment media content;

 

International Class 041

 

Entertainment services in the nature of professional football games and exhibitions; providing sports and entertainment information via a global computer network, mobile applications, commercial on-line computer service or by cable, satellite, television and radio; arranging and conducting athletic competitions, namely, professional football games; production and distribution of radio and television programs in the field of sports; entertainment services in the nature of live shows featuring football games, organizing live exhibitions, competitions, and live musical and dance performances; organization of sport competitions in the nature of sporting activities, namely, football skills competitions and football showcases; distribution of television programming to cable and satellite television systems; distribution of television programs for others; entertainment services, namely, providing online electronic games; football fan club services; providing a web site featuring sports news and entertainment news; Entertainment services in the nature of a fantasy football game.

 

See TMEP §1402.01.

 

Applicant’s goods and 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 services or add goods and 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 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 services will further limit scope, and once goods and 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.

 

Applicant should note the multiple-class application requirements provided below.

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(1)        List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)        Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least two or more classes; however, applicant submitted a fee sufficient for only one class.  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

DISCLAIMER REQUIRED

 

Applicant must provide a disclaimer of the unregistrable parts of the applied-for mark even though the mark as a whole appears to be registrable.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).  A disclaimer of an unregistrable part of a mark will not affect the mark’s appearance.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).

           

Applicant must disclaim the wording “TAMPA BAY” because it is not inherently distinctive.  This term is at best primarily geographically descriptive of the origin of applicant’s goods and/or services.  See 15 U.S.C. §§1052(e)(2); In re Societe Generale des Eaux Minerales de Vittel S.A., 824 F.2d 957, 959, 3 USPQ2d 1450, 1451-52 (Fed. Cir. 1987); TMEP §§1210.01(a), 1210.06(a), 1213.03(a).

 

The attached evidence from www.tampabaygov.net, www.tripsavy.com, and www.visittampabay.com shows that “TAMPA BAY” as a metropolitan area name is a generally known geographic place or location. See the attached evidence.  See TMEP §§1210.02 et seq.  The goods and/or services for which applicant seeks registration originate in this geographic place or location as shown by the attached industry website pertaining to applicant’s selection of team names for various cities.  See TMEP §1210.03.  Because the goods and/or services originate in this place or location, a public association of the goods and/or services with the place is presumed.  See In re Hollywood Lawyers Online, 110 USPQ2d 1852, 1858 (TTAB 2014) (citing In re Spirits of New Merced, LLC, 85 USPQ2d 1614, 1621 (TTAB 2007)); TMEP §§1210.02(a) 1210.04. 

 

Applicant may respond to this issue by submitting a disclaimer in the following format:

 

No claim is made to the exclusive right to use “TAMPA BAY” apart from the mark as shown.

 

For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.

 

ASSISTANCE

 

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 refusals and/or requirements 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.    

 

 

/Anne M. Farrell/

Law Office 118

anne.farrell@uspto.gov (informal responses only)

(571) 272-9709

 

 

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 November 25, 2019 for

U.S. Trademark Application Serial No. 88580227

 

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. 

 

 

/Anne M. Farrell/

Law Office 118

anne.farrell@uspto.gov (informal responses only)

(571) 272-9709

 

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 November 25, 2019, 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.”