Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

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:  January 12, 2021

 

This final Office action is a response to applicant’s communication filed December 9, 2020.

 

STATUS

 

In a first Office action dated June 9, 2020, the examining attorney refused registration of applicant’s mark under Trademark Act Section 2(e)(1) because the mark merely describes a feature or characteristic of applicant’s services.  In addition, the examining attorney required applicant to amend the identification of services and fulfil the requirements for the filing of a multiple-class application, if appropriate.  In its response, applicant 1) Set forth reasons as to why the Section 2(e)(1) refusal should be withdrawn; and 2) Amended the identification of services.  Neither is acceptable.

 

DESCRIPTIVENESS REFUSAL IS MADE FINAL

 

The refusal under Trademark Act Section 2(e)(1) is now made FINAL for the reasons set forth below.  See 15 U.S.C. §1052(e)(1); 37 C.F.R. §2.63(b).

 

Registration is refused because the applied-for mark merely describes a feature or characteristic of applicant’s services.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

 

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods or services.  TMEP §1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)). 

 

In this case, applicant has applied to register the mark MOBILITYSCIENCE for services identified as, “Engineering and innovation consulting services related to the mobility and transportation industries; design of interior, exterior, and powertrain automotive parts for the mobility and transportation industries.”  The definition of MOBILITY is, “The quality or state of being mobile.” The definition of SCIENCE is, “The observation, identification, description, experimental investigation, and theoretical explanation of phenomena.”  Please see the definitions attached to the first Office action from the online American Heritage® Dictionary of the English Language, Fifth Edition.  Used together as MOBILITYSCIENCE, the mark immediately describes the fact that consulting and design services to the mobility industry includes scientific consulting and design.

 

In its response, applicant argues that “the Examining Attorney’s claim that certain characteristics, such as scientific consulting, is far too broad to be directly and concretely descriptive of the relevant services.  A certain level of skill or knowledge involved does not constitute a clear and specific characteristic of the services themselves.  If the average consumer must make a mental link requiring some degree of interpretation, then the mark is suggestive and not merely descriptive.

 

In making this argument, applicant appears to be applying an incorrect legal standard.  “Whether consumers could guess what the product [or service] is from consideration of the mark alone is not the test.”  In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).  The question is not whether someone presented only with the mark could guess what the goods or services are, but “whether someone who knows what the goods and[/or] services are will understand the mark to convey information about them.”  DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012) (quoting In re Tower Tech, Inc.,64 USPQ2d 1314, 1316-17 (TTAB 2002)); In re Mueller Sports. Med., Inc., 126 USPQ2d 1584, 1587 (TTAB 2018).

 

In this case, the relevant consumer already knows that applicant is providing “engineering and innovation consulting services related to the mobility and transportation industries” and “design of interior, exterior, and powertrain automotive parts for the mobility and transportation industries.”  That is, the relevant consumer already knows that the services include engineering consultation and design services, both for the mobility industry.  That being the case, such a consumer, seeing the mark MOBILITYSCIENCE used in connection with these services, would immediately understand that the mark is describing the fact that applicant provides scientific (specifically, engineering) consultation and design services to the mobility industry. 

 

Applicant next provides a list of seven “comparable suggestive registrations and accepted applications containing the terms MOBILITY and SCIENCE.”

 

The mere submission of a list of registrations and prior pending applications does not make such registrations and applications part of the record.  See In re Peace Love World Live, LLC, 127 USPQ2d 1400, 1405 n.17 (TTAB 2018) (citing In re 1st USA Realty Prof’ls, 84 USPQ2d 1581, 1583 (TTAB 2007); In re Duofold Inc., 184 USPQ 638, 640 (TTAB 1974)); TBMP §1208.02; TMEP §710.03.  To make third party registrations or applications part of the record, an applicant must submit copies of the registrations, or the complete electronic equivalent from the USPTO’s automated systems, prior to appeal.  In re Star Belly Stitcher, Inc., 107 USPQ2d 2059, 2064 (TTAB 2013); TBMP §1208.02; TMEP §710.03.  Accordingly, these registrations and applications have not be considered.

 

In any case, it is well settled that each case must be decided on its own facts and the Trademark Trial and Appeal Board is not bound by prior decisions involving different records.  See In re Nett Designs, Inc., 236 F.3d 1339, 1342, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001); In re Datapipe, Inc., 111 USPQ2d 1330, 1336 (TTAB 2014); TMEP §1209.03(a).  The question of whether a mark is merely descriptive is determined based on the evidence of record at the time each registration is sought.  In re Virtual Indep. Paralegals, LLC, 2019 USPQ2d 111512, at *9 (TTAB 2019) (citing In re Nett Designs, Inc., 236 F.3d at 1342, 57 USPQ2d at 1566); TMEP §1209.03(a).

 

The examining attorney again notes that, although an amendment to the Supplemental Register would normally be an appropriate response to this refusal, such a response is not appropriate in the present case.  The instant application was filed under Trademark Act Section 1(b) and is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use meeting the requirements of 37 C.F.R. §2.76 has been timely filed.  37 C.F.R. §2.47(d); TMEP §§816.02, 1102.03.

 

For the foregoing reasons, the refusal is maintained and made FINAL.

 

IDENTIFICATION REQUIREMENTS ARE MADE FINAL

 

The following requirements are now made FINAL.  See 37 C.F.R. §2.63(b).

 

The identification of services is indefinite and must be clarified.  Applicant must specify the nature of the “innovation” consultation services.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may adopt the following identification, if accurate: 

 

“Engineering consulting services and innovation consulting services, namely, advising others in the areas of product development, both related to the mobility and transportation industries; design of interior, exterior, and powertrain automotive parts for the mobility and transportation industries,” in International Class 42.

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  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.

 

For the foregoing reasons, the requirements are maintained and made FINAL.

 

PROPER RESPONSE TO A FINAL OFFICE ACTION

 

Applicant may respond to this final Office action by providing one or both of the following:

 

(1)        A request for reconsideration that fully resolves all outstanding requirements and refusals; and/or

 

(2)        An appeal to the Trademark Trial and Appeal Board with the required filing fees.

 

TMEP §715.01; see 37 C.F.R. §2.63(b)(1)-(2).

 

QUESTIONS

 

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 refusals or requirements 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.

 

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 fees.

 

 

/John M. Gartner/

Trademark Examining Attorney

Law Office 102

(571) 272-9255

john.gartner@uspto.gov (informal correspondence)

 

 

 

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.