To: | Haus Services, Inc. (trademarks@lanepowell.com) |
Subject: | U.S. Trademark Application Serial No. 88789894 - HAUS - 132149.0021 |
Sent: | November 29, 2020 04:25:27 PM |
Sent As: | ecom118@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. 88789894
Mark: HAUS
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Correspondence Address: |
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Applicant: Haus Services, Inc.
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Reference/Docket No. 132149.0021
Correspondence Email Address: |
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FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA). A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action.
Issue date: November 29, 2020
This Office action is in response to applicant’s communication filed on November 3, 2020.
The translation is acceptable and the requirement is satisfied.
The fee requirement is satisfied.
Applicant’s arguments have been considered and found unpersuasive for the reason(s) set forth below. Therefore, the Section 2(e)(1) refusal is maintained and made FINAL.
SECTION 2(e)(1) REFUSAL – MARK IS MERELY DESCRIPTIVE – FINAL:
In this case, the applicant applied to register the mark HAUS for banking; financial services, namely, money lending; financial services, namely, mortgage planning; financial services, namely, mortgage refinancing; financing of fractionally-owned real property; insurance information and consultancy; loan financing; loan origination services; mortgage banking; mortgage brokerage; underwriting warranty programs in the field of real estate; arranging finance for construction projects; credit and loan services; extended warranty services, namely, service contracts; home equity loans; insurance brokerage; mortgage financing services; mortgage lending; providing home warranty administration; providing information in the field of finance; real estate brokerage; real estate financing services; real estate insurance underwriting services; real estate lending services; real estate title insurance underwriting services.
The applicant contends that the proposed mark is not merely descriptive. The examining attorney respectfully disagrees.
As previously indicated in the first Office Action, mail date May 3, 2020, and herein incorporated by reference, the term HAUS is a German term which translates to house.
The foreign equivalent of a merely descriptive English term is also merely descriptive. In re N. Paper Mills, 64 F.2d 998, 998, 17 USPQ 492, 493 (C.C.P.A. 1933); In re Highlights for Children, Inc., 118 USPQ2d 1268, 1270 (TTAB 2016) (quoting In re Optica Int’l, 196 USPQ 775, 777 (TTAB 1977)). Under the doctrine of foreign equivalents, marks with foreign terms from common, modern languages are translated into English to determine descriptiveness. Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1377, 73 USPQ2d 1689, 1696 (Fed. Cir. 2005) (citing In re Sarkli, Ltd., 721 F.2d 353, 354, 220 USPQ 111, 113 (Fed. Cir. 1983); In re Am. Safety Razor Co., 2 USPQ2d 1459, 1460 (TTAB 1987)); see TMEP §1209.03(g).
The doctrine is applied when “the ordinary American purchaser” would “stop and translate” the foreign term into its English equivalent. Palm Bay, 396 F.3d at 1377, 73 USPQ2d at 1696 (quoting In re Pan Tex Hotel Corp., 190 USPQ 109, 110 (TTAB 1976)); TMEP §1209.03(g). The ordinary American purchaser includes those proficient in the foreign language. In re Spirits Int’l, N.V., 563 F.3d 1347, 1352, 90 USPQ2d 1489, 1492 (Fed. Cir. 2009); see In re Highlights for Children, Inc., 118 USPQ2d at 1271.
The applicant’s financial services extends to include financial lending services for the purchase of houses, and insurance services for insuring houses.
It is also noted that the applicant has disclaimed the term HAUS in a prior registration and in companion applications for closely related services, specifically, U.S. Registration No. 5157862 and application serial numbers 88521699 and 88521817. See attachments. The prior registration and companion applications serve as probative evidence on the issue of descriptiveness where the relevant word or term is disclaimed.
As such, the context of the applicant’s financial and insurance services apply to the purchasing of houses and the insuring of houses.
Based on the evidence of record it is clear that the proposed mark merely describes a feature of the applicant’s services. Therefore, the proposed mark is refused registration pursuant to Section 2(e)(1) of the Trademark Act.
Accordingly, the Section 2(e)(1) refusal is maintained and made FINAL.
SUPPLEMENTAL REGISTER:
(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).
AMENDMENT TO ALLEGE USE:
Applicant is advised that, because some or all of the goods and/or services in the application are based on intent-to-use under Trademark Act Section 1(b), applicant must file an acceptable allegation of use (also called an amendment to allege use or a statement of use) for these goods and/or services before the applied-for mark can be registered. 37 C.F.R. §2.35(b)(8); TMEP §1103. An allegation of use has various legal requirements, including providing verified dates of first use of the mark, a verified statement that the mark is in use in commerce, a specimen showing the mark as actually used in commerce for each international class, and a fee. 37 C.F.R. §§2.76, 2.88; TMEP §806.01(b). In addition, certain time restrictions apply to filing an amendment to allege use or statement of use. See 37 C.F.R. §§2.76(a), 2.88(a); TMEP §§1104.03, 1109.04. See the ITU basis webpage for more information about an amendment to allege use or statement of use. To submit one, use the Trademark Electronic Application System (TEAS) Allegation of Use form.
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 request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).
/Marlene Bell/
Trademark Examining Attorney
Law Office 118
571-272-9291
marlene.bell@uspto.gov (for informal inquiries)
RESPONSE GUIDANCE