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:  May 21, 2020

 

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.

 

SEARCH OF OFFICE’S DATABASE OF MARKS

 

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

 

PRIOR PENDING APPLICATIONS

 

Potentially conflicting marks in prior-filed pending applications may present a bar to registration.  Information regarding pending Application Serial No(s). 88638710 and 88803807, is enclosed.  The effective filing dates of the referenced applications precede applicant’s filing date.  There may be likelihood of confusion between the marks under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  If either of the referenced applications registers, registration may be refused in this case under Section 2(d).  37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response resolving the following requirement(s), action on this application will be suspended pending the disposition of U.S. Application Serial No(s). 88638710 and 88803807.  37 C.F.R. §2.83(c); TMEP §§716.02(c), 1208.02(c).

 

If applicant believes there is no potential conflict between this application and the earlier-filed application(s), then applicant may present arguments relevant to the issue in a response to this Office Action.  The election not to submit arguments at this time in no way limits applicant’s right to address this issue at a later point. 

 

Application Status

 

The Trademark Applications and Registrations Retrieval (TARR) database on the USPTO website at http://tarr.uspto.gov provides detailed, up to the minute information about the status and prosecution history of trademark applications and registrations.  Please note that an application serial number or registration number is needed to access this database.  TARR is available 24 hours a day, 7 days a week.

 

REGISTRATION REFUSED UNDER TRADEMARK ACT SECTION 2(e)(1)

 

Registration is refused because the applied-for mark LOCK BOX merely describes the type and characteristics of applicant’s goods.  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 and/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)). 

 

Here, the attached dictionary definitions show the wording “lock box” in the mark means a box that locks or a lockable container. See http://www.merriam-webster.com/dictionary/lockbox and http://www.lexico.com/en/definition/lockbox, visited on May 21, 2020.

 

The determination of whether a mark is merely descriptive is made in relation to an applicant’s goods and/or services, not in the abstract.  DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012); In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); TMEP §1209.01(b).  “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).

 

Here, applicant’s goods consist of containers for household or kitchen use. Applicant’s specimen of use shows that applicant’s goods include a locking feature that secures the top of the containers. Thus, the wording “lockbox” that forms the mark merely indicates that applicant’s goods consist of a container that locks.

 

A novel spelling or an intentional misspelling that is the phonetic equivalent of a merely descriptive word or term is also merely descriptive if purchasers would perceive the different spelling as the equivalent of the descriptive word or term.   See In re Quik-Print Copy Shop, Inc., 616 F.2d 523, 526 & n.9, 205 USPQ 505, 507 & n.9 (C.C.P.A. 1980) (holding “QUIK-PRINT,” phonetic spelling of “quick-print,” merely descriptive of printing and photocopying services); In re Calphalon Corp., 122 USPQ2d 1153, 1163 (TTAB 2017) (holding “SHARPIN”, phonetic spelling of “sharpen,” merely descriptive of cutlery knife blocks with built-in sharpeners); In re Carlson, 91 USPQ2d 1198, 1203 (TTAB 2009) (holding “URBANHOUZING,” phonetic spelling of “urban” and “housing,” merely descriptive of real estate services); TMEP §1209.03(j).

 

Here, the addition of a space between the wording “lock” and “box” does not make the descriptiveness of this wording any less apparent to consumers of the goods.

 

Therefore, since the applied-for mark merely describes the applicant’s goods, registration is refused in accordance with the Trademark Act.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.  If applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

REQUEST FOR INFORMATION

 

Due to the descriptive nature of the applied-for mark, applicant must provide the following information and documentation regarding the goods and wording appearing in the mark: 

 

(1)              Fact sheets, brochures, advertisements and pertinent screenshots of applicant’s website as it relates to the goods in the application and how they close and lock, including any materials using the wording in the applied-for mark.  Merely stating that information about the goods is available on applicant’s website is insufficient to make the information of record; 

 

(2)              If these materials are unavailable, applicant should submit similar documentation for containers of the same type, explaining how the lids of the containers are secured and how its own products are or will be similar or different.  If information regarding competing goods is not available, applicant must provide a detailed factual description of the goods.  Factual information about the goods must indicate the specific ingredients and mode of consumption.  Conclusory statements will not satisfy this requirement; and

 

(3)              Applicant must also respond to the following questions:

 

a.      Can the lids of any of applicant’s containers be secured?

b.     If so, how are the lids secured?

c.      Does a consumer have to operate a component of the lids of applicant’s containers to open the lid?  

d.      

See 37 C.F.R. §2.61(b); TMEP §§814, 1402.01(e).

 

Failure to comply with a request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814. 

 

RESPONSE GUIDELINES

 

E-mail may not be used to file responses to Office actions.  These documents may be filed electronically using TEAS.  TMEP §304.02.  Further, e-mail may not be used to request an advisory opinion as to the likelihood of overcoming a refusal or requirement. 

 

Applicant may call or email the assigned trademark examining attorney to request additional explanation about the refusal(s) and/or requirement(s) in this Office action.  However, the trademark examining attorney cannot provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

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How to respond.  Click to file a response to this nonfinal Office action.    

 

 

/Edward Fennessy/

Attorney Advisor

Law Office 114

571-272-8804

Edward.Fennessy@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 May 21, 2020 for

U.S. Trademark Application Serial No. 88818190

 

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. 

 

 

/Edward Fennessy/

Attorney Advisor

Law Office 114

571-272-8804

Edward.Fennessy@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 May 21, 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.”