To: | HOLLY HUNT ENTERPRISES, INC. (trademarks@thebellesgroup.com) |
Subject: | U.S. Trademark Application Serial No. 88800220 - ASSEMBLED ARTS - HOLL-TM115 |
Sent: | May 13, 2020 07:30:17 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 Attachment - 14 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88800220
Mark: ASSEMBLED ARTS
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Correspondence Address: 1800 JFK BOULEVARD, SUITE 1010
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Applicant: HOLLY HUNT ENTERPRISES, INC.
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Reference/Docket No. HOLL-TM115
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: May 13, 2020
SEARCH OF USPTO DATABASE OF MARKS
SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
In the present case, the attached dictionary evidence shows that the wording “ASSEMBLED” means “to make something by joining separate parts together”. This wording is thus descriptive of the identified goods, which are “wallcoverings” made by joining separate parts together. (See attached evidence from applicant’s website, which states that the applicant’s products “are primarily made with marble plaster, ground mica, metal leaf, and inks finished with wax or resin. Hand applied on a non woven cellulose contact grade backing or woven glass backing.”)
Further attached dictionary evidence shows that the wording “ARTS” means “[w]orks produced by human creative skill and imagination”. This wording is thus descriptive of the identified goods, which are “wallcoverings” described on applicant’s website as “fine art to be applied directly to the wall”. See attached.
In addition, based on the definitions above, the wording “ASSEMBLED” and “ARTS” together mean works made by joining separate parts together and produced by human creative skill and imagination. In light of all the foregoing evidence, the wording “ASSEMBLED ARTS” is descriptive of the identified goods.
Applicant should note the following additional ground for refusal.
SECTIONS 1, 2, AND 45 REFUSAL – DOES NOT FUNCTION AS TRADEMARK
Whether a designation functions as a mark depends on the commercial impression it makes on the relevant public; that is, whether purchasers would be likely to regard it as a source-indicator for the goods. See In re Keep A Breast Found., 123 USPQ2d 1869, 1879 (TTAB 2017) (quoting In re Eagle Crest Inc., 96 USPQ2d 1227, 1229 (TTAB 2010)); TMEP §1202. The specimen and any other relevant evidence of use is reviewed to determine whether an applied-for mark is being used as a trademark. In re Bose Corp., 546 F.2d 893, 897, 192 USPQ 213, 216 (C.C.P.A. 1976); In re Volvo Cars of N. Am., Inc., 46 USPQ2d 1455, 1459 (TTAB 1998).
Not every designation that appears on a product or its packaging functions as a trademark, even though it may have been adopted with the intent to do so. See In re Peace Love World Live, LLC, 127 USPQ2d 1400, 1404 (TTAB 2018) (citing In re Pro-Line Corp., 28 USPQ2d 1141, 1142 (TTAB 1993)). A designation can only be registered when purchasers would be likely to regard it as a source-indicator for the goods. See In re Manco, Inc., 24 USPQ2d 1938, 1941 (TTAB 1992) (citing In re Remington Prods. Inc., 3 USPQ2d 1714, 1715 (TTAB 1987)); TMEP §1202.
The applied-for mark, as shown on the specimen, does not function as a trademark because the marks is located at the very bottom of the page, far from the goods, in a relatively small and faded font. In addition, the applied-for mark is separated from the goods by content pertaining to marginally related topics, such as “Press”, “Our Story”, “Hanging Instructions”, “Installation”, and more. Accordingly, a consumer is not likely to perceive the mark as a source indicator for the identified goods.
Response options for the refusal under Sections 1, 2, and 45
Applicant may respond to this refusal by satisfying one of the following for each applicable 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 proper trademark use for the goods 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.
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). Any webpage printout or screenshot submitted as a specimen must include the webpage’s URL and the date it was accessed or printed. 37 C.F.R. §2.56(c)
(2) Amend the filing basis to intent to use under Section 1(b) for which no specimen is required before publication. See TMEP §806.03(c). This includes withdrawing an amendment to allege use, if one was filed. This option will later necessitate additional fee(s) and filing requirements, including a specimen.
To amend the basis from Section 1(a) to Section 1(b), applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “Applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date.” 37 C.F.R. §2.34(a)(2); TMEP §806.01(b); see 15 U.S.C. §1051(b); 37 C.F.R. §2.35(b)(1).
To withdraw an amendment to allege use, applicant must make a statement in the record requesting that the amendment to allege use be withdrawn.
For more information about the response options above and instructions on how to submit a different specimen using the online Trademark Electronic Application System (TEAS) form, see the Specimen webpage.
RESPONSE GUIDELINES
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.
Shinn, Lauren
/Lauren D. Shinn/
Trademark Examining Attorney
Law Office 128
(571) 270-5230
Lauren.Shinn@USPTO.gov
RESPONSE GUIDANCE