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:  April 28, 2020

 

 

Introduction

 

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.

 

Summary of Issues for Response:

 

1.     Refusal Based on Ornamental Use;

2.     Identification of the Goods;

3.     Potential Additional Classes;

4.     Prior-Pending Application.

 

Refusal – Merely Ornamental

 

Registration is refused because the applied-for mark as used on the specimen of record is merely a decorative or ornamental feature of applicant’s clothing and, thus, does not function as a trademark to indicate the source of applicant’s clothing and to identify and distinguish applicant’s clothing from others.  Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051-1052, 1127; see In re Lululemon Athletica Can. Inc., 105 USPQ2d 1684, 1689 (TTAB 2013); In re Pro-Line Corp., 28 USPQ2d 1141, 1142 (TTAB 1993); TMEP §§904.07(b), 1202.03 et seq.

 

The size, location, dominance, and significance of the alleged mark as used on the goods are all relevant factors in determining the commercial impression of the applied-for mark.  See, e.g., In re Peace Love World Live, LLC, 127 USPQ2d 1400, 1403 (TTAB 2018) (quoting In re Hulting, 107 USPQ2d 1175, 1178 (TTAB 2013)); In re Lululemon Athletica Can. Inc., 105 USPQ2d at 1687 (quoting In re Right-On Co., 87 USPQ2d 1152, 1156 (TTAB 2008)); TMEP §1202.03(a).

 

With respect to clothing, consumers may recognize small designs or discrete wording as trademarks, rather than as merely ornamental features, when located, for example, on the pocket or breast area of a shirt.  See TMEP §1202.03(a).  Consumers may not, however, perceive larger designs or slogans as trademarks when such matter is prominently displayed across the front of a t-shirt.  See In re Pro-Line Corp., 28 USPQ2d at 1142; In re Dimitri’s Inc., 9 USPQ2d 1666, 1667-68 (TTAB 1988); TMEP §1202.03(a), (b), (f)(i), (f)(ii).

 

In this case, the submitted specimen shows the applied-for mark, “ELITE,” located directly on the upper-front of the shirt; where ornamental elements often appear.  See TMEP §1202.03(a), (b).  Furthermore, the mark is displayed in a relatively large size on the clothing such that it dominates the overall appearance of the goods.  Therefore, consumers would view the applied-for mark as a decorative or ornamental feature of the goods, rather than as a trademark to indicate the source of applicant’s goods and to distinguish them from others.

 

In appropriate circumstances, applicant may overcome this refusal by satisfying one of the following options:

 

(1)       Submit a different specimen (a verified “substitute” specimen) that 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 that shows proper trademark use for the identified goods in International Class 25.  Examples of acceptable specimens that show non-ornamental use on clothing include hang tags and labels used inside a garment.

 

(2)       Amend to the Supplemental Register, which is a second trademark register for marks not yet eligible for registration on the Principal Register, but which may become capable over time of functioning as source indicators.

 

(3)       Claim acquired distinctiveness under Trademark Act Section 2(f) by submitting evidence that the applied-for mark has become distinctive of applicant’s goods; that is, proof that applicant’s extensive use and promotion of the mark allowed consumers now directly to associate the mark with applicant as the source of the goods.

 

(4)       Submit evidence that the applied-for mark is an indicator of secondary source; that is, proof that the mark is already recognized as a source indicator for other goods or services that applicant sells/offers.    

 

(5)       Amend the filing basis to intent to use under Section 1(b).  This option will later necessitate additional fee(s) and filing requirements.

 

For an overview of the response options above and instructions on how to satisfy each option online using the Trademark Electronic Application System (TEAS) form, see the Ornamental Refusal webpage.

 

Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.  If the applicant does respond, please address the following informalities.

 

Identification of the Goods

 

The identification of goods is unacceptable because it contains number strings, which seem to be a typographical error.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  In addition, the term “clothing” must always be further defined by the specific type of clothing. Applicant must amend the identification to specify the common commercial or generic name of the goods.  See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.

 

Applicant may adopt the following wording, if accurate: 

 

Class 9:           Articles of protective clothing with built in armor for protection against accident or injury for use when riding motorcycles;

 

Class 11:         Electric footmuffs;

 

Class 12:         Fitted footmuffs for baby carriages;

 

Class 25:         Headwear, namely, bathing caps, berets, cap peaks, caps, hat frames, hats, headgear for wear, mantillas, miters, shower caps, skull caps, top hats, turbans, visors, wimples .and#65339; Clothing and#65341;  namely, aprons, ascots, babies' pants, bandanas, bath robes, bathing trunks, bathing suits, beach coverups, clothes, belts, bibs, not of paper, boas, bodices, brassieres, breeches for wear, camisoles, chasubles, clothing for gymnastics shoes and shorts,

clothing, clothing of imitations of leather, clothing of leather, leather pants and shoes, coats, collar protectors pads for application to clothing collars, collars, combinations, corselets, corsets, cuffs, cyclists' shoes and shorts clothing, detachable collars, dress shields, dresses, dressing gowns, ear muffs , fishing vests, footmuffs, fur stoles, fur jackets, gabardines, garters, girdles, gloves, headbands, heelpieces for stockings, hoods, hosiery, jackets, jerseys, pinafore dresses, knitwear knit sweaters and dresses, clothing layettes, leggings, leg warmers, liveries, maniples, masquerade costumes, mittens, money belts, motorists' clothing, muffs, neckties, outerclothing, overalls, overcoats, drawers as clothing, paper clothing, paper hats used as clothing, parkas, pelerines, pelisses, petticoats, pocket squares, pockets for clothing, ponchos, pullovers, pajamas, ready-made textile linings for garments, ready-made clothing, saris, sarongs, sashes for wear, scarves, shawls, shirt yokes, shirt fronts, shirts, short-sleeve shirts, sports jerseys, ski gloves, skirts, skorts, sleep masks, slips as underclothing, sock suspenders, socks, gaiters, stocking suspenders, stockings, sweat-absorbent stockings, stuff jackets, suits, suspenders, anti-sweat underwear, sweaters, teddies as underclothing, tee-shirts, tights, togas, gaiter straps, trousers, underpants, underwear, uniforms, veils, vests, waterproof jackets clothing, wet suits for water-skiing and#65339;Footwearand#65341; bath sandals, bath slippers, beach shoes, boot uppers, boots, boots for sports, esparto shoes or sandals, fittings of metal for Japanese wooden footwear, football shoes, footwear, footwear uppers, galoshes, gymnastic shoes, half-boots, heelpieces for footwear, heels, inner soles, lace boots, non-slipping soles devices for footwear, sandals, shoes, ski boots, slippers, soles for footwear, sports shoes, studs for football boots, tips for footwear, welts for footwear, wooden shoes.

 

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 and/or services, but not to broaden or expand the goods and/or services 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 and/or services may not later be reinserted.  See TMEP §1402.07(e).

 

Insufficient Fee

 

The application references goods and/or services based on use in commerce in more than one international class; therefore, applicant must satisfy all the requirements below for each international class:

 

(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 four classes; however, applicant submitted a fee(s) sufficient for only one 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 not acceptable for any international class>.  See more information about specimens.

 

Examples of specimens.  Specimens for goods include a photograph of (1) the actual goods bearing the mark; (2) an actual container, packaging, tag or label for the goods bearing the mark; or (3) a point-of-sale display showing the mark directly associated with the goods.  See 37 C.F.R. §2.56(b)(1), (c); TMEP §904.03(a)-(m).  A webpage specimen submitted as a display associated with the goods must show the mark in association with a picture or textual description of the goods and include information necessary for ordering the goods.  TMEP §904.03(i); see 37 C.F.R. §2.56(b)(1), (c). 

 

Specimens for services must show a direct association between the mark and the services and include:  (1) copies of advertising and marketing material, (2) a photograph of business signage or billboards, or (3) materials showing the mark in the sale, rendering, or advertising of the services.  See 37 C.F.R. §2.56(b)(2), (c); TMEP §1301.04(a), (h)(iv)(C). 

 

Any webpage printout or screenshot submitted as a specimen, whether for goods or services, must include the webpage’s URL and the date it was accessed or printed.  37 C.F.R. §2.56(c).

 

(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 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).

 

For 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, see the Multiple-class Application webpage.

 

Search for References – No Conflicting Registered Marks – One Prior Pending Application

 

The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d).  15 U.S.C. §1052(d); TMEP §704.02.

 

However, the filing date of pending U.S. Application Serial No. 88246060 precedes applicant’s filing date.  See attached referenced application.  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 between the two marks.  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.

 

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.

 

Information on How to Respond to this Office Action

 

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.

 

Video Tutorials on Trademarks

 

The USPTO website provides information for those unfamiliar with the process of applying for federal trademark registration, such as an e-booklet about registering trademarks, FAQs, and more.  Two tools on the USPTO’s website that are particularly helpful during the examination process are the (1) informational videos and (2) application processing timelines.  The videos provide information in a broadcast news format regarding a range of issues that arise during the examination of an application, such as specimens and goods and services.  The application processing timelines provide information regarding the USPTO’s processing time for certain documents, as well as crucial legal deadlines.

 

The USPTO website provides a “Basic Facts” booklet and video series that include information about registering a trademark, including how trademarks, patents, copyrights, domain names, and business name registrations all differ, and how to select the right mark – one that is both federally registrable and legally protectable.  They also explain the benefits of federal registration and suggest resources to help an applicant with filing an application. 

 

Legal Representation Suggested

 

Because of the legal technicalities and strict deadlines of the trademark application process, applicant is encouraged to hire a private attorney who specializes in trademark matters to assist in this 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. 

 

An applicant may check the status of or view documents filed in an application or registration using the Trademark Status and Document Retrieval (TSDR) system.  Enter the application serial number or registration number and click on “Status” or “Documents.”

 

For assistance addressing the legal issues raised in this action, please contact the undersigned attorney.  For all other matters, including filing questions, status inquiries and general questions, please contact the Trademark Assistance Center at 1-800-786-9199 or 571-272-1000.Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are 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.    

 

 

/Susan Leslie DuBois/

Examining Attorney

Law Office 111

571.272.9154

susan.dubois@uspto.gov

 

 

RESPONSE GUIDANCE

• 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.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on April 28, 2020 for

U.S. Trademark Application Serial No. 88786387

 

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. 

 

 

/Susan Leslie DuBois/

Examining Attorney

Law Office 111

571.272.9154

susan.dubois@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 April 28, 2020, 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.”