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:  June 28, 2020

 

 The referenced application has been reviewed by the assigned Trademark Examining Attorney.  Applicant must respond timely and completely to the issues 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 marks that would bar registration under Trademark Act Section 2(d).  15 U.S.C. §1052(d); TMEP §704.02.

 

SUMMARY OF ISSUES TO WHICH APPLICANT MUST RESPOND:

 

• Section 2(e)(1) Refusal – Merely Descriptive
• Additional Information Required
• Amended Identification of Goods Required

 

Also contained herein is a Generic Advisory.

 

SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE

 

Registration is refused because the applied-for mark merely describes a feature 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.

 

Applicant's mark is EPC for firearms components and accessories, namely, lower receivers and upper receviers.

 

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of Applicant’s goods.  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)). 

 

An abbreviation, initialism, or acronym is merely descriptive when it is generally understood as “substantially synonymous” with the descriptive words it represents.  See In re Thomas Nelson, Inc., 97 USPQ2d 1712, 1715 (TTAB 2011) (citing Modern Optics, Inc. v. Univis Lens Co., 234 F.2d 504, 506, 110 USPQ 293, 295 (C.C.P.A. 1956)) (holding NKJV substantially synonymous with merely descriptive term “New King James Version” and thus merely descriptive of bibles); In re BetaBatt Inc., 89 USPQ2d 1152, 1155 (TTAB 2008) (holding DEC substantially synonymous with merely descriptive term “direct energy conversion” and thus merely descriptive of a type of batteries and battery related services); TMEP §1209.03(h).

 

A mark consisting of an abbreviation, initialism, or acronym will be considered substantially synonymous with descriptive wording if:

 

(1)     the applied-for mark is an abbreviation, initialism, or acronym for specific wording;

 

(2)     the specific wording is merely descriptive of Applicant’s goods; and

 

(3) a relevant consumer viewing the abbreviation, initialism, or acronym in connection with Applicant’s goods will recognize it as the equivalent of the merely descriptive wording it represents.

 

TMEP §1209.03(h); see In re Thomas Nelson, Inc., 97 USPQ2d at 1715-16 (citing In re Harco Corp., 220 USPQ 1075, 1076 (TTAB 1984)).

 

In the present case, the attached evidence shows that Applicant’s mark “EPC” is an acronym for the wording “Ejection Port Cover”. See http://www.forwardcontrolsdesign.com/EPC_p_216.html#:~:text=EPC%20(Ejection%20Port%20Cover)%20is,for%20the%20port%20cover%20spring. An “Ejection Port Cover” is a dust cover for the opening in the receiver of a firearm through which the expended cases are thrown from the piece after firing. See http://www.mysoutherntactical.com/the-importance-of-ejection-port-dust-covers.html#:~:text=As%20the%20name%20implies%2C%20ejection,thunder%20stick%E2%80%9D%20for%20a%20reason. Further, the attached evidence shows that this wording is merely descriptive of a feature of Applicant’s firearm receiver goods because the “Ejection Port Cover” is a component of those goods. See http://www.brownells.com/rifle-parts/receiver-parts/ejection-port-cover-parts/index.htm; http://riflesupply.com/-Tan-AR-15-Upper-Receiver-Ejection-Port-Dust-Cover-Kit-_p_21.html; http://www.wingtactical.com/firearm-parts/ar-15/upper-receiver-parts/upper-receiver-parts/anderson-manufacturing-ar-15-ejection-port-cover/.

 

Lastly, a relevant consumer viewing Applicant’s mark in connection with the identified goods would recognize it as the equivalent of the descriptive wording it represents because third parties commonly use the acronym “EPC” to advertise or describe similar goods. See http://www.opticsplanet.com/xts-xts-epc-ejection-port-cover.html; http://backwoodsports.com/products/copy-of-delta-ring-assembly-complete; http://kaiserus.com/shop/ar-15/upper-parts/x-7-blackbird-eject-port-cover-epc/; http://www.specializedarmament.com/%E2%80%94-upper-receiver-parts/ejection-port-cover-kit-5.56mm-4-piece/.

 

Conclusion

 

For the foregoing reasons, the applied-for mark is merely descriptive of a feature of Applicant's goods and registration is refused pursuant to Section 2(e)(1) of the Trademark Act.

 

Although Applicant’s mark has been refused registration, Applicant may respond to the refusal by submitting evidence and arguments in support of registration.

 

GENERIC ADVISORY

 

In addition to being merely descriptive, the applied-for mark appears to be generic in connection with the identified goods.  “A generic mark, being the ‘ultimate in descriptiveness,’ cannot acquire distinctiveness” and thus is not entitled to registration on either the Principal or Supplemental Register under any circumstances.  In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 1336, 116 USPQ2d 1262, 1264 (Fed. Cir. 2015) (quoting H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 989, 228 USPQ 528, 530 (Fed. Cir. 1986)); see TMEP §§1209.01(c) et seq., 1209.02(a).  Therefore, the Trademark Examining Attorney cannot recommend that Applicant amend the application to proceed under Trademark Act Section 2(f) or on the Supplemental Register as possible response options to this refusal.  See TMEP §1209.01(c).

 

REQUIREMENTS

 

If Applicant responds to the refusal, then Applicant must also respond to the requirements set forth below.

 

Additional Information Required

 

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, instruction manuals, brochures, advertisements and pertinent screenshots of Applicant’s website as it relates to the goods in the application, including any materials using the terms 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 goods of the same type, explaining how its own product will differ.  If the goods feature new technology and information regarding competing goods is not available, Applicant must provide a detailed factual description of the goods.  Factual information about the goods must make clear how they operate, salient features, and prospective customers and channels of trade. Conclusory statements will not satisfy this requirement.; and

 

(3)        Applicant must respond to the following questions: 

 

a)      What does “EPC” stand for in the applied-for mark?

 

b)      Do Applicant’s goods include “Ejection Port Covers”?

 

c)      Do Applicant’s goods contain “Ejection Port Covers” as parts of the goods?

 

d)      Do Applicant’s competitors use “EPC” to advertise or describe similar goods?

 

e)      Who is the typical consumer of Applicant’s goods?

 

f)       Where are Applicant’s goods typically purchased?

 

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. 

 

Amended Identification of Goods Required

 

The identification of goods is indefinite and must be clarified because it does not make clear what the goods are.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend the identification to specify the common commercial or generic name of the goods.  See TMEP §1402.01.  If the goods have no common commercial or generic name, Applicant must describe the product, its main purpose, and its intended uses.  See id.

 

Applicant may adopt the following wording, if accurate:

 

Class 13 – Firearms accessories, namely, lower receivers and upper receivers, all sold as component parts for firearms

 

Scope Advisory

 

Applicant may amend the identification to clarify or limit the goods, but not to broaden or expand the goods beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods may not later be reinserted.  See TMEP §1402.07(e).

 

ID Manual Online

 

For assistance with identifying and classifying goods in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

HOW TO RESPOND

 

For this application to proceed, Applicant must explicitly address each refusal and requirement in this Office action.  For a refusal, Applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, Applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

Click to file a response to this nonfinal Office action.    

 

ASSISTANCE

 

Please call or email the assigned Trademark Examining Attorney with questions about this Office action.  Although the Examining Attorney cannot provide legal advice, the Examining Attorney can provide additional explanation about the refusal and requirements in this Office action.  See TMEP §§705.02, 709.06. 

 

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. 

 

/Samantha Sherman/

Examining Attorney

Law Office 123

571-270-0903

samantha.sherman@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 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 June 28, 2020 for

U.S. Trademark Application Serial No. 88855621

 

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. 

 

 

Samantha Sherman

/Samantha Sherman/

Examining Attorney

Law Office 123

571-270-0903

samantha.sherman@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 June 28, 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.”