Response to Office Action

PTO- 1957

Approved for use through 11/30/2023. OMB 0651-0050

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number

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PTO- 1957

Approved for use through 11/30/2023. OMB 0651-0050

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88843483 CLUB QUARANTINE(Standard Characters, see http://uspto.report/TM/88843483/mark.png) has been amended as follows:

ADDITIONAL STATEMENTS
Miscellaneous Statement
RESPONSE The Examining Attorney's August 10, 2020 Office Action was received and considered. In that Action the Examining Attorney refused to register Applicant's "Club Quarantine" mark on the following grounds: (i) Section 2(e)(1) Refusal - Merely Descriptive; (ii) Sections 1 and 45 - Failure to Show Use in Commerce (Class 41 Only); (iii) Sections 1, 2, 3 and 45 - Failure to Function; and Multiple-Class Application Requirements. Each basis for refusal is addressed in turn below. Class 41 I. Section 2(e)(1) - Merely Descriptive A. Applicable Legal Definition The examining attorney asserts that the applied for mark is not registerable under 2(e)(1) because the "Act provides a term is not a registerable trademark when it "consists of a mark which (1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them."" 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)). We contend, as discussed below, the "Club Quarantine" mark is not merely descriptive of the associated services. B. Applicable Legal Standard For Review . The Trademark Manual of Examining Procedure clarifies that the appropriate test for determining descriptiveness is "whether the mark conveys an immediate idea of an ingredient, quality, characteristic, feature, function, purpose or use of the goods." TMEP 1209.01(b). The TMEP makes clear that the mark but be examined in relation to the associated goods or services, not the current sociopolitical climate or the state of public health. In this case the words Club and Quarantine should be analyzed to determine whether or not they describe the services outlined in the trademark application including "Dance Club Services; Entertainment services, namely, conducting parties; Entertainment services, namely, providing virtual environments in which users can interact for recreational, leisure or entertainment purposes." The cases cited by the examining attorney focus on only the descriptiveness of the source of the goods or services (See In re Major League Umpires, 60 USPQ2d 1059, 1060 (TTAB 2001)) and the characteristics, qualities, and ingredients of the goods or services (See In re TriVita, Inc. , 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015)). The "Club Quarantine" mark is distinguishable from the cited cases. C. Both individual components of the mark are not descriptive of the services for which the mark operates as a trademark. The mark has two individual components, "Club" and "Quarantine", and two distinct associated types of services. While the word "Club" alone may be descriptive of the "Dance Club Services", "Club" is not the singular component in the mark. While the Office Action contends the second component, "Quarantine" is also descriptive, we would argue that it is neither descriptive of the services nor the source thereof. First, to distinguish Major League Umpires, there the Board relied upon the source of the goods to find that the mark was in fact descriptive because the sellers that sought the registration were in fact MLB umpires and they intended to sell the paraphanalia and attire that umpires use. Here, the owner of the mark is neither a club nor a quarantine. Next, "Quarantine" cannot be properly labeled as descriptive of the services listed in the application and provided by the applicant. That analysis improperly conflates virtual and quarantine. Quarantine is state of isolation but virtual technology is a technological innovation used regardless of the current state of public health. Virtual technology existed long before the rolling periods of quarantine across the world in 2020. While quarantine does call for isolation, virtual technology can be used to simulate various scenarios. In the case of the virtual Club Quarantine parties, many people attending the parties were not under quarantine, nor were they isolated. Instead, the virtual parties, DJd by the world famous, D-Nice, simply brought people together that were in various parts of the world. Therefore, quarantine would not be descriptive of the virtual entertainment services. At most, a quarantine may provide an opportunity or desire for virtual environments. That relationship between the mark and the need for a solution to situation brought on by a public health emergency may be suggestive if anything. Additionally, not all of the services described and provided were virtual. To date, Club Quarantine has been used for both virtual and in person events. Most recently D-Nice provided a Club Quarantine set live at the Super Bowl on Sunday February 7, 2021 and also hosted the party virtually. Finally, even if the perception of the isolated state of the world in 2020 was not in fact the current state of things when the application for the mark was filed. Instead, according to the New York Times, by March 23, 2020, only 9 of the 50 states had issued their first Covid-19 stay at home order. http://www.nytimes.com/interactive/2020/us/coronavirus-stay-at-home-order.html. Additionally, there has at no time, since the mark was first used in commerce been a global mandate for the world to go into isolation or quarantine. II. Sections 1 and 45 Refusal - Failure to Show Use in Commerce A. Failure to show the actual services. The specimen submitted shows actual advertising in the caption of the Art. III. Sections 1, 2, 3 and 45 Refusal - Failure to Function A. Applicant maintains priority in applying for the mark. Though other users may have subsequently used the words such use does not prevent this mark from failing to function. Applicant's principal maintains 2.5million users on Instagram and has the distinct commercial impression with converage from Oprah, The Daily Show, and Gayle King. Class 25 I. Widely Used. As of the date of the application, this mark was not widely used. Since first use by the applicant, most other users have tried to trade off of the good will of applicant and trick consumers into purchasing merchandise they believe to have been affiliated with applicant Ex. http://www.teepublic.com/t-shirt/9548397-club-quarantine-home-school-2020?store_id=203885. This wide use is damaging to the consuming public. II. Ornamental and Incapable The examining attorney's analysis of the ornamental nature of the mark is premature as we have not yet submitted a specimen. However, please note the Bel-Air Athletics merchandise is in fact a collaboration between the applicant and Bel-Air. Multiple-Class Application Fee The additional fee to cover both Class 25 and Class 41 is submitted with this response.

Correspondence Information (current):
      CORINNE ELIZABETH CATER
      PRIMARY EMAIL FOR CORRESPONDENCE: cater@thecaterfirm.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED
Correspondence Information (proposed):
      Corinne Elizabeth Cater
      PRIMARY EMAIL FOR CORRESPONDENCE: cater@thecaterfirm.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

FEE(S)
Fee(s) in the amount of $350 is being submitted.

SIGNATURE(S)
Response Signature
Signature: /Corinne Cater/     Date: 02/10/2021
Signatory's Name: Corinne Cater
Signatory's Position: Corinne Cater, attorney of record, new york bar
Signature method: Signed directly within the form

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    CORINNE ELIZABETH CATER
   THE CATER FIRM
   
   730 RIVERSIDE DRIVE 7E
   NEW YORK, New York 10031
Mailing Address:    Corinne Elizabeth Cater
   THE CATER FIRM
   730 RIVERSIDE DRIVE 7E
   NEW YORK, New York 10031
        
PAYMENT: 88843483
PAYMENT DATE: 02/10/2021
        
Serial Number: 88843483
Internet Transmission Date: Wed Feb 10 23:59:11 ET 2021
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2021021023591134
8677-88843483-760ea99d5bbd476c74150d2aa6
3a69e8c93da29913f10e42b84e4982958bacac8d
c-CC-59081866-20210210233307335900