To: | Rent-A-Christmas LLC (judah@rent-a-christmas.com) |
Subject: | U.S. Trademark Application Serial No. 88618877 - ELF - N/A |
Sent: | December 04, 2019 07:24:07 PM |
Sent As: | ecom128@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88618877
Mark: ELF
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Correspondence Address:
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Applicant: Rent-A-Christmas LLC
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Reference/Docket No. N/A
Correspondence Email Address: |
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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 04, 2019
SEARCH OF OFFICE’S DATABASE OF MARKS
SUMMARY OF ISSUES
· REFUSAL – SECTION 2(e)(1) – MERELY DESCRIPTIVE
· REFUSAL – SPECIMEN DOES NOT SHOW USE IN COMMERCE
· POTENTIAL REFUSAL – PRIOR-FILED APPLICATION
· REQUIREMENT – IDENTIFICATION OF GOODS AND/OR SERVICES
· ADVISORY – HIRING OF TRADEMARK COUNSEL
REFUSAL – SECTION 2(e)(1) – MERELY DESCRIPTIVE
Registration is refused because the applied-for mark merely describes a characteristic 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.
The proposed mark is “ELF” for services including “sales of live and artificial Christmas decorations”. The attached evidence from "The American Heritage Dictionary" shows that the wording “ELF” means “a mystical creature in human form but usually smaller, often considered mischievous”. The attached evidence from “Amazon”, “Grandinroad”, “Oriental Trading”, and “Christmas Central” shows that companies sell artificial Christmas decorations in the shape of an elf. Therefore, the wording “ELF” is merely descriptive of a characteristic of applicant’s services in that companies sell artificial Christmas decorations in the shape of a mystical creature in human form but usually smaller, often considered mischievous.
A mark does not need to be merely descriptive of all the goods or services specified in an application. In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); In re Franklin Cnty. Historical Soc'y, 104 USPQ2d 1085, 1089 (TTAB 2012). “A descriptiveness refusal is proper ‘if the mark is descriptive of any of the [goods or] services for which registration is sought.’” In re The Chamber of Commerce of the U.S., 675 F.3d at 1300, 102 USPQ2d at 1219 (quoting In re Stereotaxis Inc., 429 F.3d 1039, 1040, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005)).
Response Options
(1) Use of the registration symbol ® with the registered mark in connection with the designated goods and/or services, which provides public notice of the registration and potentially deters third parties from using confusingly similar marks.
(2) Inclusion of the registered mark in the USPTO’s database of registered and pending marks, which will (a) make it easier for third parties to find it in trademark search reports, (b) provide public notice of the registration, and thus (c) potentially deter third parties from using confusingly similar marks.
(3) Use of the registration by a USPTO trademark examining attorney as a bar to registering confusingly similar marks in applications filed by third parties.
(4) Use of the registration as a basis to bring suit for trademark infringement in federal court, which, although more costly than state court, means judges with more trademark experience, often faster adjudications, and the opportunity to seek an injunction, actual damages, and attorneys’ fees and costs.
(5) Use of the registration as a filing basis for a trademark application for registration in certain foreign countries, in accordance with international treaties.
See 15 U.S.C. §§1052(d), 1091, 1094; J. Thomas McCarthy, McCarthy on Trademarks& Unfair Competition §§19:33, 19:37 (rev. 4th ed. Supp. 2017).
Applicant should note the following additional ground for refusal.
REFUSAL – SPECIMEN DOES NOT SHOW USE IN COMMERCE
Registration is refused because the specimen does not show the applied-for mark in use in commerce in International Class(es) 35. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a), 1301.04(g)(i).
Specifically, the submitted specimens do not show the applied-for mark as the source identifier for the applied-for services of “design, rental and sales of live and artificial Christmas decorations; delivery, installation, pick up and removal (strike) of live and artificial Christmas decorations”. The submitted specimens discuss the wording “ELF” in the informational text of the screenshots of applicant’s website as part of the explanation of how applicant provides the applied-for services. Moreover, the submitted specimens do not depict the applied-for mark in a prominent way so there is an association between the applied-for mark and the services. Rather, the submitted specimens show the “RENT-A-CHRISTMAS” mark as the source of the applied-for services. Therefore, registration is denied. TMEP Section 904.03(i)(B)(1).
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 or amendment to allege use. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
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).
Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(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 or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the services identified in the application or amendment to allege use. 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 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.
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration. If applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below. Additionally, applicant should note the following potential ground for refusal.
POTENTIAL REFUSAL – PRIOR-FILED APPLICATION
The filing date(s) of the following pending U.S. Application precedes applicant’s filing date:
U.S. Application Serial No. 88222623 (“ELFLET” for “Games and playthings, namely, puppets; gymnastic and sporting articles not included in other classes, namely, skipping ropes; decorations for Christmas trees, namely, baubles and tinsel; action figures and accessories therefor; playsets for action figures; toy furniture; plush toys; balloons; bathtub toys; ride-on toys; equipment sold as a unit for playing card games; toy vehicles; dolls; flying discs; electronic hand-held game unit; game equipment sold as a unit for playing a board game, a card game, a manipulative game, a parlour game and an action type target game; stand-alone video output game machines; jigsaw and manipulative puzzles; paper face masks; skateboards; ice skates; water squirting toys; balls, namely, playground balls, soccer balls, baseballs, basketballs; baseball gloves; swimming floats for recreational use; kickboard flotation devices for recreational use; surfboards; swim boards for recreational use; swim fins; toy bakeware and toy cookware; toy banks; toy snow globes; paper party hats; and Christmas tree ornaments; game equipment sold as a unit for playing a parlour-type computer game; amusement park rides; snow globes; masquerade and Halloween masks; trading cards for games” in international Class 28).
· The potential refusal applies to applicant’s “Design, rental and sales of live and artificial Christmas decorations; delivery, installation, pick up and removal (strike) of live and artificial Christmas decorations” in International Class 35.
See attached referenced application(s). If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s). 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 application(s).
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 mark in the referenced application. 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.
Upon receipt of applicant’s response resolving the following requirement(s), action on this application will be suspended pending the disposition of the above-noted prior-filed application(s). 37 C.F.R. §2.83(c); TMEP §§716.02(c), 1208.02(c).
REQUIREMENT – IDENTIFICATION OF GOODS AND/OR SERVICES
Applicant must clarify some of the wording in the identification of goods and/or services because it is indefinite. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because it does not make clear the exact nature of the goods and/or services.
Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the description of the goods and/or services.
Therefore, applicant must delete “sale(s)” from the identification and indicate with greater specificity the nature of the service in International Class 35; e.g., “retail store services featuring artificial Christmas decorations and featuring live Christmas decorations in the nature of live Christmas trees, garlands, and wreaths”, “wholesale distributorships featuring artificial Christmas decorations and featuring live Christmas decorations in the nature of live Christmas trees, garlands, and wreaths”, and “on-line wholesale and retail store services featuring artificial Christmas decorations and featuring live Christmas decorations in the nature of live Christmas trees, garlands, and wreaths”.
With respect to the wording “design”, design and development of tangible goods and visual displays is in Class 42, but design of intangible goods, such as advertising, insurance policies, and educational curriculum, are classified according to subject matter, and those services are classified in Classes 35, 36, and 41, respectively. In this case, applicant applied for design of “live and artificial Christmas decorations”, which would be tangible goods and/or visual displays and be classified in Class 42.
With respect to the wording “rental”, rental services are in principle classified in the same classes as the services provided by means of the rented objects, e.g., rental of construction equipment is in Class 37, rental of telephones is in Class 38, and rental of motor vehicles are in Class 39. Therefore, “rental of live Christmas decorations” have been reclassified to Class 44.
Applicant has classified “design of live and artificial Christmas decorations” in International Class 35; however, the proper classification is International Class 42. Therefore, applicant may respond by (1) adding International Class 42 to the application and reclassifying these goods and/or services in the proper international class, (2) deleting “design of live and artificial Christmas decorations” from the application, or (3) deleting the remainder of the items in the identification and reclassifying the specified goods and/or services in the proper international class. See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq. If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.
Applicant has classified “delivery of live and artificial Christmas decorations” and “pick up of live and artificial Christmas decorations” in International Class 35; however, the proper classification is International Class 39. Therefore, applicant may respond by (1) adding International Class 39 to the application and reclassifying these goods and/or services in the proper international class, (2) deleting “delivery of live and artificial Christmas decorations” from the application, or (3) deleting the remainder of the items in the identification and reclassifying the specified goods and/or services in the proper international class. See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq. If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.
Applicant has classified “installation of live and artificial Christmas decorations” in International Class 35; however, the proper classification is International Class 37. Therefore, applicant may respond by (1) adding International Class 37 to the application and reclassifying these goods and/or services in the proper international class, (2) deleting “installation of live and artificial Christmas decorations” from the application, or (3) deleting the remainder of the items in the identification and reclassifying the specified goods and/or services in the proper international class. See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq. If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.
Applicant should note that any wording in bold, in italics, underlined and/or in ALL
CAPS below offers guidance and/or shows the changes being proposed for the identification of goods and/or services. If there is wording in the applicant’s version of
the identification of goods and/or services which should be removed, it will be shown with a line through it such as this: strikethrough. When making its amendments, applicant should enter them in standard font, not in bold, in italics, underlined or in ALL CAPS.
Applicant may substitute the following wording, if accurate:
Class 35: Design, rental and sales of live and artificial Christmas decorations; online retail
store services featuring artificial Christmas decorations and featuring live Christmas decorations in the nature of live Christmas trees, garlands, and wreaths delivery, installation, pick up
and removal (strike) of live and artificial Christmas decorations
Class 37: installation of artificial Christmas decorations and installation of live Christmas decorations in the nature of live Christmas trees, garland, and wreaths
Class 39: delivery of artificial Christmas decorations and delivery of live Christmas decorations in the nature of live Christmas trees, garlands, and wreaths; pick up of artificial Christmas decorations and pick up of live Christmas decorations in the nature of live Christmas trees, garlands, and wreaths as personal property
Class 42: design of live Christmas decorations in the nature of live Christmas trees, garlands, and wreaths for use as interior décor and design of artificial Christmas decorations for use as interior décor
Class 44: rental of live Christmas decorations, namely, renting of live Christmas trees for Christmas decoration display; removal of live Christmas decorations, namely, Christmas tree removal services
See TMEP §§1402.01, 1402.03.
An applicant may only amend an identification to clarify or limit the services, but not to add to or broaden the scope of the services. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. Generally, any deleted services may not later be reinserted. See 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.
Advisory – Multiple Class Application
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). Specifically, the application identifies goods and/or services based on use in commerce that are classified in at least 5 classes; however, applicant submitted a fee(s) sufficient for only 1 class(es). Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.
(3) Submit verified dates of first use of the mark anywhere and in commerce for each international class. See more information about verified dates of use.
(4) Submit a specimen for each international class. The current specimen is acceptable for class 35, 37, 39, 42, and 44. See more information about specimens.
Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and website printouts that show the mark used in the actual sale, rendering, or advertising of the services.
(5) Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.” See more information about verification.
See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
ADVISORY – HIRING OF TRADEMARK COUNSEL
Because of the legal technicalities and strict deadlines of the trademark application process, applicant may wish to hire a private attorney who specializes in trademark matters to assist in the process. The assigned trademark examining attorney can provide only limited assistance explaining the content of an Office action and the application process. USPTO staff cannot provide legal advice or statements about an applicant’s legal rights. TMEP §§705.02, 709.06. See Hiring a U.S.-licensed trademark attorney for more information.
CONCLUSION
For this application to proceed further, applicant must explicitly address each refusal and/or requirement raised in this Office action. If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register. Applicant may also have other options for responding to a refusal and should consider such options carefully. To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements. For more information and general tips on responding to USPTO Office actions, response options, and how to file a response online, see “Responding to Office Actions” on the USPTO’s website.
If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end and the trademark will fail to register. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a); TMEP §§718.01, 718.02. Additionally, the USTPO will not refund the application filing fee, which is a required processing fee. See 37 C.F.R. §§2.6(a)(1)(i)-(iv), 2.209(a); TMEP §405.04.
Where the application has been abandoned for failure to respond to an Office action, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to active status. See 37 C.F.R. §2.66; TMEP §1714. There is a $100 fee for such petitions. See 37 C.F.R. §§2.6, 2.66(b)(1).
If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney. All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.
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.
/Xu, Elaine/
Trademark Examining Attorney
Law Office 128
(571) 270-5297
elaine.xu@uspto.gov
RESPONSE GUIDANCE