| To: | 1ST GEAR AUTO INC. (trademarks@tuckerellis.com) |
| Subject: | U.S. Trademark Application Serial No. 88589071 - NCAM - 16340-000006 |
| Sent: | November 26, 2019 04:59:06 PM |
| Sent As: | ecom117@uspto.gov |
| Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88589071
Mark: NCAM
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Correspondence Address: |
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Applicant: 1ST GEAR AUTO INC.
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Reference/Docket No. 16340-000006
Correspondence Email Address: |
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NON-FINAL OFFICE ACTION
THE USPTO MUST RECEIVE APPLICANT’S RESPONSE TO THIS LETTER WITHIN SIX (6) 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 26, 2019
The referenced application has been reviewed by the assigned trademark examining attorney.
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 should note the following issues with this application:
(1) Registration is refused in International Class 36 because the applied-for mark, as used on the specimen, does not function as a service mark; and
(2) Registration is refused in International Classes 35 and 37 because the specimens do not show the applied-for mark in use in commerce with the services identified in these classes.
Applicant must respond timely and completely to these two issues. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SECTIONS 1, 2, 3 & 45 REFUSAL – MATTER DOES NOT FUNCTION AS A MARK
THIS REFUSAL APPLIES TO INTERNATIONAL CLASS 36 ONLY.
The fact that a designation has been adopted with the intention that it function as a service mark “does not necessarily mean that the [designation] accomplishes that purpose in reality.” Roux Labs., Inc. v. Clairol, Inc., 427 F.2d 823, 828 (C.C.P.A. 1970); see Am. Velcro, Inc. v. Charles Mayer Studios, Inc., 177 USPQ 149, 154 (TTAB 1973). To function as a service mark, a designation must be used in a manner that would be perceived by purchasers as identifying and distinguishing the source of the services recited in the application. See In re Bose Corp., 546 F.2d 893, 896-97 (C.C.P.A. 1976); In re Standard Oil Co., 275 F.2d 945, 947 (C.C.P.A. 1960). “Even an inherently distinctive designation is not a trademark if it is not used in a trademark manner.” In re Aerospace Optics, Inc., 78 USPQ2d 1861, 1864 (TTAB 2006) (citing J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 3.3 (4th ed. database updated 2005)). Thus, the critical question in determining whether applicant’s proposed mark functions as a service mark is the commercial impression it makes on the relevant public (e.g., whether the term sought to be registered would be perceived as a mark identifying the source of the services). See TMEP §1301.02(a); see, e.g., In re Eagle Crest Inc., 96 USPQ2d 1227, 1229 (TTAB 2010). In determining whether a designation functions as a trademark and/or service mark, “the manner in which an applicant has employed the asserted mark, as evidenced by the specimens of record, must be carefully considered ….” In re Bose, 546 F.2d at 897.
The applied-for mark, as shown on the specimen, does not function as a service mark because it appears once as part of a longer sentence (“TAKE A LOOK AT THE NCAM FINANCING DIFFERENCE”) surrounded by informational wording in the same font style, color, and size as the applied-for mark. As such, the commercial impression engendered by the webpage specimen is that “NCAM” is merely a shorthand way of referring to “North Coast Auto Mall”. Indeed, on a second printout of what appears to be the same webpage, the term “NCAM” is followed by “(NORTH COAST AUTO MALL)”, which conveys to consumers that “NCAM” is being in an informational manner and not as a mark. Consequently, the applied-for mark does not stand out to consumers as a service mark, and there is no evidence that consumers would perceive the term as a service mark. See, e.g., In re Aerospace Optics, 78 USPQ2d at 1863 (SPECTRUM failed to function as a mark where the coloring and font in which the proposed mark was displayed were not sufficient to imbue the term with source-identifying significance or to set it apart from other informational wording); In re Volvo Cars of N. Am. Inc., 46 USPQ2d 1455, 1459 (TTAB 1998); In re Remington Prods. Inc., 3 USPQ2d 1714, 1715 (TTAB 1987); In re Morganroth, 208 USPQ 284, 287 (TTAB 1980); cf. In re Post Properties, Inc., 227 USPQ 334 (TTAB 1985) (the designation QUALITY SHOWS, set off from text of advertising copy in extremely large typeface and reiterated at the conclusion of the narrative portion of the ad, held to be a registrable service mark for applicant’s real estate management and leasing services, because it was used in a way that made a commercial impression separate from that of the other elements of advertising material upon which it was used, such that the designation would be recognized by prospective customers as a source identifier).
Therefore, registration is refused under Trademark Act Sections 1, 2, 3, and 45 because the applied-for mark, as shown on the specimen of use, does not function as a service mark for the listed services.
SECTIONS 1 & 45 REFUSAL – MARK DOES NOT APPEAR ON SPECIMENS
THIS REFUSAL APPLIES TO INTERNATIONAL CLASSES 35 AND 37 ONLY.
Specifically, the term “NCAM” is never used on the specimens in connection with these services, only the stylized wording “North Coast Auto Mall,” in which the first letter of each of these words appears in the color red. However, there is no indication that consumers would view these first letters as a separate, distinct mark from “North Coast Auto Mall.” In other words, the first letters are not separable elements creating a distinct commercial impression apart from the wording in which they appear.
An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of services identified in the application. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a). Because applicant has not provided such a specimen for International Classes 35 and 37, registration of these classes must be refused under Trademark Act Sections 1 and 45.
HOW TO RESPOND TO THE SPECIMEN-BASED REFUSALS
The previous two refusals are based on applicant’s specimens of use. Applicant may respond to these refusals by satisfying one of the following for each international class of services:
(1) Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application and (b) shows the mark in actual use in commerce for the services identified in the application.
Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and webpages that show the mark used in the actual sale, rendering, or advertising of the services. See TMEP §1301.04(a), (h)(iv)(C). Specimens comprising advertising and promotional materials must show a direct association between the mark and the services. TMEP §1301.04(f)(ii).
A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.” The substitute specimen cannot be accepted without this verified statement.
(2) Amend the filing basis to intent to use under Section 1(b), for which no specimen is required. This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.
For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.
RESPONSE REQUIRED
For this application to proceed, applicant must explicitly address each refusal in this Office action. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
Click to file a response to this non-final Office action
/Andrew Leaser/
Trademark Examining Attorney
Law Office 117
(571) 272-1911
andrew.leaser@uspto.gov
RESPONSE GUIDANCE
Missing the response deadline to this letter will cause the application to abandon. A response must be received by the USPTO before midnight Eastern Time of the last day of the response period. TEAS maintenance or unforeseen circumstances could affect applicant’s ability to timely respond.
Informal communications will not be accepted as responses to Office actions and will not be considered; therefore, do not respond to this Office action by telephone or e-mail. All informal communications relevant to this application will be placed in the official application record.
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.