To: | Outdoor Cap Company, Inc. (mkachigian@hjkwlaw.com) |
Subject: | U.S. Trademark Application Serial No. 88580355 - THE HEADWEAR EXPERTS - OUT644/19270 |
Sent: | November 18, 2019 02:30:25 PM |
Sent As: | ecom114@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 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88580355
Mark: THE HEADWEAR EXPERTS
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Correspondence Address: HEAD, JOHNSON, KACHIGIAN & WILKINSON, PC
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Applicant: Outdoor Cap Company, Inc.
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Reference/Docket No. OUT644/19270
Correspondence Email Address: |
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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 18, 2019
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.
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SEARCH OF OFFICE’S DATABASE OF MARKS
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
However, applicant must address the following refusal(s) and/or requirement(s):
SUMMARY OF ISSUES:
SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
Registration is refused because the applied-for mark merely describes a characteristic or feature of applicant’s goods and/or services. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.
“Whether consumers could guess what the product [or service] is from consideration of the mark alone is not the test.” In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
Applicant’s has applied for the standard character mark “THE HEADWEAR EXPERTS” for the following services, namely, providing a website featuring blogs and social media blog posts in the field of clothing and headwear.
As indicated by the attached definition, the word the is used as a function word to indicate that a following noun or noun equivalent is definite. The term headwear is defined as apparel for the head. The term expert is defined as one with special skill or knowledge representing mastery of a particular subject. See attached definitions from Merriam-Webster.
In relation to applicant’s services, the wording in the mark is a combination of words which describes the characteristic or feature of the services related to the field of applicant’s blogs, namely, information provided by those with special skills or knowledge representing mastery of the subject being headwear. Applicant’s identification of services clearly identifies headwear as the field for the services indicative of the descriptive nature of this term in the mark in relation to the services. In addition, the services as identified in the application are broad enough to include such services provided by those with special skill or knowledge in the field of headwear.
Thus, given the plain meaning of the wording in the mark in relation to the services, registration is refused because the applied-for mark merely describes the characteristic or feature of applicant’s blogs in the field of headwear which is provided by those with special skill or knowledge representing mastery of a particular subject, namely, headwear.
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.
SUPPLEMENTAL REGISTER
If applicant files an acceptable allegation of use and also amends 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 an amendment to allege use. TMEP §§816.02, 1102.03; see 37 C.F.R. §2.75(b). In addition, the undersigned trademark examining attorney will conduct a new search of the USPTO records for conflicting marks based on the later application filing date. TMEP §§206.01, 1102.03.
An amendment to allege use may be filed online via the Trademark Electronic Application System (TEAS). Filing an amendment to allege use is not considered a response to an Office action. 37 C.F.R. §2.76(h); TMEP §1104. An applicant must file a separate response to any outstanding Office action. TMEP §1104; see 37 C.F.R. §2.76(h).
REQUIREMENTS
CLASSIFICATION AND IDENTIFICATION OF SERVICES/MULTIPLE-CLASS APPLICATION REQUIREMENTS
The wording “Providing a website featuring blogs and social media blog posts in the field of clothing and headwear” in the identification of services is indefinite and must be clarified because the wording does not make clear the exact nature of the services with enough specificity by common commercial or generic name for proper identification and classification of the services in this class and/or the wording is too broad and could identify services in more than one international class. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
While the wording “Providing a website feature blogs in the field of clothing and headwear” would be an acceptable identification, the wording related to “social media blog posts” is not a service provided via a website clearly classified in this class. In general, blogs are considered online journal services with an indicated subject matter in International Class 41. However, the wording “social media blog posts” is indefinite wording This wording may reference user-defined information that is the subject of computer services, namely, providing customized on-line webpages and data feeds featuring user-defined information including blog posts in International Class 42. See attached information regarding blog services from the U.S. Acceptable Identification of Goods and Services Manual. For this reason, the wording in the identification related to “social media blog posts” is unclear as to whether it identifies blog services clearly classified in International Class 41 or a computer service in International Class 42. Thus, applicant must clarify these services accordingly.
Overall, applicant must amend this wording to specify the common commercial or generic name of the services. See TMEP §1402.01. If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language. See id.
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 may substitute the following wording, if accurate:
Providing a website featuring blogs in the field of clothing and headwear; providing a website featuring social media blogs in the field of clothing and headwear, International Class 41; and/or
Computer services, namely, providing a website featuring customized on-line web pages and data feeds featuring user-defined information in the nature of social media blog posts in the field of clothing and headwear, International Class 42.
Applicant’s goods and/or 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/or services or add goods and/or 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/or 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/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted. TMEP §1402.07(e).
MULTIPLE-CLASS APPLICATION REQUIREMENTS
(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(s) already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in at least two classes; however, applicant submitted a fee(s) sufficient for only one class(es). 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). The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class. See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a). See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.
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.
RESPONDING TO THIS OFFICE ACTION
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 refusal(s) and/or requirement(s) 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.
How to respond. Click to file a response to this nonfinal Office action
/Brendan McCauley/
Brendan McCauley
Trademark Examining Attorney
Law Office 114
571-272-9459
Brendan.McCauley@USPTO.GOV
RESPONSE GUIDANCE