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:  December 13, 2019

 

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).

 

SUMMARY OF ISSUES: 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.

 

• Section 2(e)(1) – Merely Descriptive
• Section 1, 2, 3, & 45 Refusal – Information Wording about the Goods
• Amendment Required – Identification of Goods
• Multiple-Class Application Requirements

 

 

I.                SECTION 2(e)(1) REFUSAL – MERELY DESCRIPTIVE

 

Registration is refused because the applied-for mark merely describes a use and feature of applicant’s goods.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

 

The Mark

 

The applied-for mark is EXTEND TENSION ROD TO THE DESIRED LENGTH, AND TWIST TO TIGHTEN, in standard characters, for “drapery and window shade hardware, namely, curtain rods, double rods, magnetic rods, wide pocket rods, traverse rods, spring tension rods, sash rods, café rods, metro rods, finials, rings, brackets, shade pulls, bottom rails, top rails, bars, hooks, tie backs, hold backs, sconces, center supports, and rod supports; and shower and bathroom hardware, namely, shower rods, shower curtain hooks, shower curtain rings, and non-metal brackets” in International Class 20.

 

Merely Descriptive Analysis

 

The applied-for mark EXTEND TENSION ROD TO THE DESIRED LENGTH, AND TWIST TO TIGHTEN merely describes a use, feature, and general type of applicant’s goods, namely, that those goods include tension rods and are installed by being extended to a desired length and then tightened by twisting.

 

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

 

The attached evidence from the American Heritage dictionary shows that “extend” means “to cause to be longer, wider, or to cover more area”, that “tension” is “a force tending to stretch or elongate something”, that a “rod” a “thin straight piece or bar of material, such as metal or wood, often having a particular function or use, as…an often expandable horizontal bar, especially of metal, used to suspend household items such as curtains or towels”, that “to” means “to the extent or degree of”, that “desired” is the past tense of “desire” and means “to wish or long for”, and that “length” is the “extent or distance from beginning to end.”  The attached evidence from Overstock.com shows, further, that a tension rod is a kind of expandable bar used to suspend household items such as curtains.  The statement EXTEND TENSION ROD TO THE DESIRED LENGTH therefore means cause an expandable bar used to suspend household items such as curtains to the wished for distance from beginning to end.  The attached evidence from the American Heritage dictionary also shows that “twist” means “to turn” and that, that “to” means “for the purpose of”, and that “tighten” means “to make tight or tighter.”  The phrase TWIST TO TIGHTEN therefore means to turn for the purpose of making tight or tighter.

 

 Applicant’s goods in this case include a variety of “drapery and window shade hardware” and “shower and bathroom hardware”, e.g. “spring tension rods”, which presumably encompass all goods of those types, including such goods that are installed by being extended to a desired length and then tightened by twisting.  The attached evidence from Overstock.com, Wikihow.com, YLighting.com shows further that applicant’s goods are commonly installed by being extended to a desired length and then tightened by twisting.  The attached evidence from applicant’s website, Kenney.com, also shows applicant itself instructs consumers to “twist to tighten” when installing its goods.  The applied-for mark EXTEND TENSION ROD TO THE DESIRED LENGTH, AND TWIST TO TIGHTEN therefore merely describes a use, feature, and general type of applicant’s goods. 

 

The combination of terms in the applied-for mark does not alter or diminish their descriptive meaning.  If the individual components of a mark retain their descriptive meaning in relation to the goods, the combination generally results in a composite mark that is itself descriptive and not registrable.  In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1516 (TTAB 2016) (citing In re Tower Tech, Inc., 64 USPQ2d 1314, 1317-18 (TTAB (2002)); TMEP §1209.03(d); see, e.g., Apollo Med. Extrusion Techs., Inc. v. Med. Extrusion Techs., Inc., 123 USPQ2d 1844, 1851 (TTAB 2017) (holding MEDICAL EXTRUSION TECHNOLOGIES merely descriptive of medical extrusion goods produced by employing medical extrusion technologies); In re Cannon Safe, Inc., 116 USPQ2d 1348, 1351 (TTAB 2015) (holding SMART SERIES merely descriptive of metal gun safes); In re King Koil Licensing Co., 79 USPQ2d 1048, 1052 (TTAB 2006) (holding THE BREATHABLE MATTRESS merely descriptive of beds, mattresses, box springs, and pillows).  It is only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise non-descriptive meaning in relation to the goods and/or services is the combined mark registrable.  See In re Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968); In re Positec Grp. Ltd., 108 USPQ2d 1161, 1162-63 (TTAB 2013).

 

The applied-for mark EXTEND TENSION ROD TO THE DESIRED LENGTH, AND TWIST TO TIGHTEN in this case contains no design, stylization, punctuation, or grammatical characteristics that might alter the descriptive meaning of its component terms.  Consumers who encounter the applied-for mark used in connection with applicant’s goods would understand the mark as merely conveying information about those goods, namely, that applicant’s goods, e.g. “spring tension rods”, are installed by being extended to a desired length and then tightened by twisting.

 

Conclusion

 

The applied-for mark EXTEND TENSION ROD TO THE DESIRED LENGTH, AND TWIST TO TIGHTEN merely describes a use, feature, and general type of applicant’s goods.  Registration of the applied-for mark on the Principal Register is therefore refused under Section 2(e)(1) of the Trademark Act.

 

 

II.              SECTION 1, 2, 3 & 45 REFUSAL – INFORMATIONAL WORDING ABOUT GOODS

 

Registration is refused because the applied-for mark is a slogan or term that does not function as a trademark or service mark to indicate the source of applicant’s goods and to identify and distinguish them from others.  Trademark Act Sections 1, 2, 3, and 45, 15 U.S.C. §§1051-1053, 1127.  The applied-for mark in this case is a slogan comprising terms and phrases commonly used by those in applicant’s particular trade or industry to merely convey information about the goods identified in the application.  See In re Boston Beer Co., 198 F.3d 1370, 1372-74, 53 USPQ2d 1056, 1058-59 (Fed. Cir. 1999) (holding THE BEST BEER IN AMERICA for beer and ale a common claim of superiority and incapable of registration); In re Melville Corp., 228 USPQ 970, 971 (TTAB 1986) (holding BRAND NAMES FOR LESS for retail clothing store services a common promotional phrase and incapable of registration); TMEP §1202.04(a). 

 

Slogans and terms that are merely informational in nature, such as statements or laudatory phrases about goods ordinarily used in business or in a particular trade or industry, are not registrable.  See In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229 (TTAB 2010).  Determining whether the slogan or term functions as a trademark or service mark depends on how it would be perceived by the relevant public.  In re Eagle Crest, Inc., 96 USPQ2d at 1229; In re Aerospace Optics, Inc., 78 USPQ2d at 1862; TMEP §1202.04.  “The more commonly a [slogan or term] is used, the less likely that the public will use it to identify only one source and the less likely that it will be recognized by purchasers as a trademark [or service mark].”  In re Hulting, 107 USPQ2d 1175, 1177 (TTAB 2013) (quoting In re Eagle Crest, Inc., 96 USPQ2d at 1229); TMEP §1202.04(b).

 

The applied-for mark in this case constitutes informational instructions telling consumers how applicant’s goods may be used, i.e., the mark instructs consumers to install applicant’s goods by extending them to a desired length and then twisting to tighten.  The attached evidence from the American Heritage dictionary shows that “extend” means “to cause to be longer, wider, or to cover more area”, that “tension” is “a force tending to stretch or elongate something”, that a “rod” a “thin straight piece or bar of material, such as metal or wood, often having a particular function or use, as…an often expandable horizontal bar, especially of metal, used to suspend household items such as curtains or towels”, that “to” means “to the extent or degree of”, that “desired” is the past tense of “desire” and means “to wish or long for”, and that “length” is the “extent or distance from beginning to end.”  The attached evidence from Overstock.com shows, further, that a tension rod is a kind of expandable bar used to suspend household items such as curtains.  The statement EXTEND TENSION ROD TO THE DESIRED LENGTH therefore means cause an expandable bar used to suspend household items such as curtains to the wished for distance from beginning to end.  The attached evidence from the American Heritage dictionary also shows that “twist” means “to turn” and that, that “to” means “for the purpose of”, and that “tighten” means “to make tight or tighter.”  The phrase TWIST TO TIGHTEN therefore means to turn for the purpose of making tight or tighter.

 

The attached evidence from Overstock.com, Wikihow.com, YLighting.com shows, further, that the terms and phrases in the applied-for mark are commonly used by those in applicant’s industry to indicate how applicant’s goods, e.g. “spring tension rods”, may be installed.  The attached evidence from applicant’s website, Kenney.com, also shows applicant itself instructs consumers to “twist to tighten” when installing its goods.  Consumers would perceive the applied-for mark EXTEND TENSION ROD TO THE DESIRED LENGTH, AND TWIST TO TIGHTEN as merely as informational matter indicating how applicant’s goods may be installed, because they are accustomed to seeing such wording used in this manner.  The applied-for mark therefore would not be perceived as a mark that identifies the source of applicant’s goods.

 

An applicant may not overcome this refusal by amending the application to seek registration on the Supplemental Register or asserting a claim of acquired distinctiveness under Section 2(f).  TMEP §1202.04(d); see In re Eagle Crest, Inc., 96 USPQ2d at 1229.  Nor will submitting a substitute specimen overcome this refusal.  See TMEP §1202.04(d). 

 

 

III.            AMENDMENT REQUIRED – IDENTIFICATION OF GOODS

 

Applicant must amend the identification of goods in International Class 20 for the reasons stated below.

 

Indefinite and Overbroad Wording in Identification

 

The wording “drapery and window shade hardware, namely, …double rods, magnetic rods, wide pocket rods, …spring tension rods, sash rods, café rods, metro rods, …rings; …bottom rails, top rails, bars rods, hooks, tie backs, hold backs” in the identification of goods is indefinite and must be clarified because the nature of the goods is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Applicant must clarify the wording “brackets”, “center supports”, and “rod supports” in the identification of goods in International Class 20 because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because the nature of the goods is unclear.  Further, this wording could identify goods in more than one international class.  For example, “mounting brackets for general use” are in International Class 6, while “non-metal mounting brackets for general use” are in International Class 20.

 

Applicant must clarify the wording “shade pulls” in the identification of goods in International Class 20 because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because it does not specify the material composition of the goods.  Further, this wording could identify goods in more than one international class.  For example, “common metal pulls” are in International Class 6, “precious metal pulls” are in International Class 14, and “non-metal pulls” are in International Class 20.

 

Applicant must clarify the wording “sconces” in the identification of goods in International Class 20 because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because the nature of the goods is unclear.  Further, this wording could identify goods in more than one international class.  For example, “sconce lighting fixtures” are in International Class 11, while “non-electric wall sconces in the nature of candle holders” are in International Class 21.

 

The wording “shower and bathroom hardware, namely, …non-metal brackets” in the identification of goods is indefinite and must be clarified because the nature of the goods is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Misspelled Wording in Identification

 

The wording “bars” in the identification of goods appears to be improperly pluralized, and is thus indefinite. The spelling must be corrected or the wording further clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01(a). 

 

Suggested Wording for Identification

 

Applicant may substitute the following wording, if accurate (note that added text is indicated with bold type, deleted text is indicated with a strike through, and suggested text is indicated with braces):

 

“Common metal shade pulls” in International Class 6.

 

“Sconce lighting fixtures” in International Class 11.

 

“Precious metal shade pulls” in International Class 14.

 

“Drapery and window shade hardware, namely, curtain rods, double {clarify nature of the goods, e.g. “curtain”} rods, magnetic {clarify nature of the goods, e.g. “curtain”} rods, wide pocket {clarify nature of the goods, e.g. “curtain”} rods, traverse rods, spring tension {clarify nature of the goods, e.g. “curtain”} rods, sash rods in the nature of {specify nature of the goods, e.g. “curtain rods”}, café rods in the nature of {specify nature of the goods, e.g. “curtain rods”}, metro rods in the nature of {specify nature of the goods, e.g. “curtain rods”}, finials, {clarify nature of the goods, e.g. “curtain”} rings, {clarify nature of the goods, e.g. “mounting”} brackets {clarify nature of the goods, e.g. “adapted for curtain rods”}, {specify material composition, e.g. “non-metal”} shade pulls, bottom rails in the nature of {clarify nature of the goods, e.g. “curtain rails”}, top rails {clarify nature of the goods, e.g. “curtain rails”}, bars rods in the nature of {specify nature of the goods, e.g. “curtain rods”}, {clarify nature of the goods, e.g. “curtain”}  hooks, {clarify nature of the goods, e.g. “curtain”} tie backs, {clarify nature of the goods, e.g. “curtain”} hold backs, sconces in the nature of {clarify the nature of the goods, e.g. “mounting brackets adapted for curtain rods”}, center supports in the nature of {clarify the nature of the goods, e.g. “mounting brackets adapted for curtain rods”}, and rod supports in the nature of {clarify the nature of the goods, e.g. “mounting brackets adapted for curtain rods”}; and shower and bathroom hardware, namely, shower rods, shower curtain hooks, shower curtain rings, and non-metal brackets {clarify nature of the goods, e.g. “for general use”}” in International Class 20.

 

“Non-electric wall sconces in the nature of candle holders” in International Class 21.

 

Applicant will be required to add International Class 6, 11, 14, and 21 should it choose to adopt the above suggested wording.  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) et seq., 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.

 

Advisories – ID Manual and Scope of Amendments

 

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 amend the identification to clarify or limit the goods, but not to broaden or expand the goods beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods may not later be reinserted.  See TMEP §1402.07(e).

 

 

IV.            MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

The application identifies goods 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 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 that are classified in at least five 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.

 

 

RESPONSE GUIDELINES

 

For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

• 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.

 

Click HERE to file a response to this non-final 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. 

 

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.  

 

/Carl A. Konschak/

Carl A. Konschak, Esq.

Examining Attorney

Law Office 126

(571) 270-3878

carl.konschak@uspto.gov

 

 

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on December 13, 2019 for

U.S. Trademark Application Serial No. 88599495

 

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. 

 

 

/Carl A. Konschak/

Carl A. Konschak, Esq.

Examining Attorney

Law Office 126

(571) 270-3878

carl.konschak@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 December 13, 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.”