To: | American Society of Home Inspectors, Inc ETC. (Lawhsr@mailovo.com) |
Subject: | U.S. Trademark Application Serial No. 88646742 - INTERNATIONAL SOCIETY OF HOME - N/A |
Sent: | December 04, 2019 04:33:00 PM |
Sent As: | ecom125@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88646742
Mark: INTERNATIONAL SOCIETY OF HOME
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Correspondence Address: |
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Applicant: American Society of Home Inspectors, Inc ETC.
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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
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issu 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).
SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
In this case, applicant has applied for the mark INTERNATIONAL SOCIETY OF HOME INSPECTORS in connection with its services identified as “Association services, namely, promoting the interests of professional home inspectors promoting awareness of professional home inspectors.”
In this case, the attached dictionary evidence shows that the wording “INTERNATIONAL” in the applied-for mark means “[e]xisting, occurring, or carried on between nations.” Moreover, the term “international” has been held merely descriptive of services that are international in scope. TMEP §1209.03(o); see In re Inst. Investor, Inc., 229 USPQ 614 (TTAB 1986) (holding INTERNATIONAL BANKING INSTITUTE for organizing seminars for bank leaders of major countries incapable); In re Billfish Int’l Corp., 229 USPQ 152 (TTAB 1986) (holding BILLFISH INTERNATIONAL CORPORATION merely descriptive of corporation involved with billfish on an international scale); BankAmerica Corp. v. Int’l Travelers Cheque Co., 205 USPQ 1233 (TTAB 1979) (holding INTERNATIONAL TRAVELERS CHEQUE merely descriptive of financial consulting services that are international in scope).
In addition, the attached dictionary evidence shows that the wording “SOCIETY” in the applied-for mark means “[a]n organization or club formed for a particular purpose or activity.” The descriptive nature of the applied-for mark is further demonstrated by the applicant’s identification of services, which describes its association services as promoting the interests of “HOME INSPECTORS”. Moreover, the attached internet evidence from applicant’s website clearly describes itself as “an Internationally recognized organization for home inspectors,” and the additional internet evidence from International Society of Arboriculture, International Society of Biomechanics, International Society of Automation, International Society of Appraisers, International Society of Hematology, and International Society of Bassists shows that entities commonly use the wording “INTERNATIONAL SOCIETY” to indicate that the entities are organizations promoting particular interests and activities in multiple countries.
Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the 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).
In this case, both the individual components and the composite result are descriptive of applicant’s services and do not create a unique, incongruous, or nondescriptive meaning in relation to the services. Specifically, whether viewed individually or as a composite result, the terms in the applied-for mark convey that the applicant is an international organization whose purpose is to promote the interests of home inspectors.
As a result, registration must be refused under Section 2(e)(1) of the Trademark Act.
SUPPLEMENTAL REGISTER ADVISORY – NOT YET AVAILABLE
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.
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 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.
Justin Miller
/Justin Miller/
Trademark Examining Attorney Law Office 125
(571) 272-6040
justin.miller@uspto.gov
RESPONSE GUIDANCE