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:  July 07, 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.

 

SUMMARY OF ISSUES:

• Specimen Refusal
• Section 2(e)(1) Refusal – Merely Descriptive
• Supplemental Register Advisory
• Section 2(f) Requirement
• Trademark Attorney Advisory

 

SEARCH OF USPTO 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.

 

However, applicant must respond to the following refusals and requirement.

 

SPECIMEN REFUSAL

Mark shown on drawing does not match mark on specimen.  Registration is refused because the specimen does not show the mark in the drawing in use in commerce in International Class 041, which is required in the application. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a), 1301.04(g)(i).  The mark appearing on the specimen and in the drawing must match; that is, the mark in the drawing “must be a substantially exact representation of the mark” on the specimen.  See 37 C.F.R. §2.51(a)-(b); TMEP §807.12(a).

 

In this case, the specimen displays the mark as WI YEAR, WICOOLER and WIGLOW.  However, the drawing displays the mark as WI. The mark on the specimen does not match the mark in the drawing because the mark on the specimen adds addition words to the end of WI.  Applicant has thus failed to provide the required evidence of use of the mark in commerce.  See TMEP §807.12(a).

 

Response options.  Applicant may respond to this refusal by satisfying one of the following:

 

(1)       Submit a different specimen (a verified “substitute” specimen) for each applicable international class that (a) shows the mark in the drawing in actual use in commerce for the services in the application, and (b) was in actual use in commerce at least as early as the filing date of the application.

 

Examples of specimens.  Specimens for services must show a direct association between the mark and the services and include:  (1) copies of advertising and marketing material, (2) a photograph of business signage or billboards, or (3) materials showing the mark in the sale, rendering, or advertising of the services.  See 37 C.F.R. §2.56(b)(1), (c); TMEP §1301.04(a), (h)(iv)(C). 

 

Any web page 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)       Submit a request to amend the filing basis to intent to use under Section 1(b), as no specimen is required before publication. This option will later necessitate an additional fee and filing requirements such as providing a specimen. Please note, if applicant chooses this option, then applicant cannot amend the application to the Supplemental Register.

 

The USPTO will not accept an amended drawing submitted in response to this refusal because the changes would materially alter the drawing of the mark in the original application. See 37 C.F.R. §2.72(a)-(b); TMEP §807.14.  Specifically, the mark in the drawing has the commercial impression of an acronym, whereas the mark on the specimen has the commercial impression of phrases and/or terms. Therefore, the marks have different commercial impressions.

 

For more information about drawings and instructions on how to satisfy these response options using the online Trademark Electronic Application System (TEAS) form, see the Drawing webpage.

 

Applicant should note the following additional ground for refusal.

 

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

Registration is refused because the applied-for mark merely describes the intended user 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 the intended user of an applicant’s 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)). 

 

The determination of whether a mark is merely descriptive is made in relation to an applicant’s 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).

 

Generally, if the individual components of a mark retain their descriptive meaning in relation to the services, the combination results in a composite mark that is itself descriptive and not registrable.  In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1516 (TTAB 2016) (citing In re Tower Tech, Inc., 64 USPQ2d 1314, 1317-18 (TTAB (2002)); TMEP §1209.03(d); see, e.g., Apollo Med. Extrusion Techs., Inc. v. Med. Extrusion Techs., Inc., 123 USPQ2d 1844, 1851 (TTAB 2017) (holding MEDICAL EXTRUSION TECHNOLOGIES merely descriptive of medical extrusion goods produced by employing medical extrusion technologies); In re Cannon Safe, Inc., 116 USPQ2d 1348, 1351 (TTAB 2015) (holding SMART SERIES merely descriptive of metal gun safes); In re King Koil Licensing Co., 79 USPQ2d 1048, 1052 (TTAB 2006) (holding THE BREATHABLE MATTRESS merely descriptive of beds, mattresses, box springs, and pillows). 

 

Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the services is the combined mark registrable.  See In re Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968); In re Positec Grp. Ltd., 108 USPQ2d 1161, 1162-63 (TTAB 2013).

 

In this case, both the individual components and the composite result are descriptive of applicant’s services and do not create a unique, incongruous, or nondescriptive meaning in relation to the services.  Specifically, the applicant has applied to register the mark WI for “Entertainment services in the nature of hosting social entertainment events” in class 041. WI is an acronym for “West Indian”. See http://www.dictionary.com/browse/wi. Therefore, WI merely describes applicant hosts social entertainment events for West Indians, which is the intended user of applicant’s services. A mark that describes an intended user or group of users of a product or service is merely descriptive. E.g., In re Planalytics, Inc., 70 USPQ2d 1453 (TTAB 2004) (holding GASBUYER merely descriptive of intended user of risk management services in the field of pricing and purchasing natural gas); In re Camel Mfg. Co., 222 USPQ 1031 (TTAB 1984) (holding MOUNTAIN CAMPER merely descriptive of intended users of retail and mail order services in the field of outdoor equipment and apparel); see TMEP §1209.03(i). Specifically, applicant hosts events for West Indian people, as shown by the description of one of applicant’s events on Eventbrite. See http://www.eventbrite.com/e/wi-year-2020-masquerade-ball-drinks-inclusive-tickets-75201380353#. The Eventbrite webpage states: “Bringing signature events to Caribbean West Indian People.” See Id.

 

Moreover, many companies that provide similar services as applicant use the acronym WI to describe the intended user of their services, as denoted by the following examples of use in the attached screenshots:

 

• “NYC’s W. I. parade”. See http://www.ieyenews.com/nycs-w-i-parade/. “NYC’s West Indian parade brings cultural pride to rainy day”. See Id.
• “THE WEST INDIAN GALA (WI) IS AN EVENT FOR THE WEST INDIAN COMMUNITY AND OTHERS TO COME OUT IN THEIR FORMAL ATTIRE TO NETWORK AND BUILD LIKE ONLY WEST INDIANS CAN, WITH VIBES.” See http://www.facebook.com/events/50-bridge-st-dedham-ma-02026-1702-united-states/2nd-annual-west-indian-gala/151464318883278/.
• “To empower the vast West Indian (Wi) Canadian youth and inspire the next generation.” See http://www.facebook.com/pg/wicanadian/about/. “We host annual quality events such as the Miss West Indian Canadian Pageant, Wi Canadian Expo, Wi Can Dance Competition, fashion shows, and much more to all be featured on our upcoming WebTVwhich will bring awareness of West Indians living in Canada and connect them with others around the world.” See Id.

 

Thus, the wording in the applicant’s mark is merely descriptive of the intended user of applicant’s services.

 

Therefore, the term WI immediately conveys to purchasers that applicant hosts social entertainment events for West Indians. Thus, the mark is merely descriptive of the intended user of applicant’s services, and registration is refused pursuant to Section 2(e)(1) of the Trademark Act.

 

SUPPLEMENTAL REGISTER ADVISORY

 

The applied-for mark has been refused registration on the Principal Register. Applicant may respond to this refusal by submitting evidence and arguments in support of registration and/or by amending the application to seek registration on the Supplemental Register.  See 15 U.S.C. §1091; 37 C.F.R. §§2.47, 2.75(a); TMEP §§801.02(b), 816.  Amending to the Supplemental Register does not preclude applicant from submitting evidence and arguments against this refusal. TMEP §816.04.

 

Although registration on the Supplemental Register does not afford all the benefits of registration on the Principal Register, it does provide the following advantages to the registrant:

 

(1)       Use of the registration symbol ® with the registered mark in connection with the designated services, which provides public notice of the registration and potentially deters third parties from using confusingly similar marks.

 

(2)       Inclusion of the registered mark in the USPTO’s database of registered and pending marks, which will (a) make it easier for third parties to find it in trademark search reports, (b) provide public notice of the registration, and thus (c) potentially deter third parties from using confusingly similar marks.

 

(3)       Use of the registration by a USPTO trademark examining attorney as a bar to registering confusingly similar marks in applications filed by third parties.

 

(4)       Use of the registration as a basis to bring suit for trademark infringement in federal court, which, although more costly than state court, means judges with more trademark experience, often faster adjudications, and the opportunity to seek an injunction, actual damages, and attorneys’ fees and costs.

 

(5)       Use of the registration as a filing basis for a trademark application for registration in certain foreign countries, in accordance with international treaties.

 

See 15 U.S.C. §§1052(d), 1091, 1094; J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition §§19:33, 19:37 (rev. 4th ed. Supp. 2017).

 

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

 

SECTION 2(F) REQUIREMENT

 

Applicant’s Trademark Act Section 2(f) claim based on five years’ use is insufficient to show acquired distinctiveness because applicant’s dates of use of the mark indicate that applicant has not actually used the mark in commerce for the requisite time period.  See 15 U.S.C. §1052(f).  For this claim to be accepted, applicant’s substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate must have been for at least five years before the date on which the claim is made.  15 U.S.C. §1052(f); 37 C.F.R. §2.41(a)(2); TMEP §1212.05.  And such use must have been in a type of commerce that may be regulated by the U.S. Congress.  See 15 U.S.C. §§1052(f), 1127.

 

In the present case, applicant asserted a claim of acquired distinctiveness on April 1, 2020. Five years prior to this date would be approximately April 1, 2015.  However, the date of first use in commerce specified in the application is May 1, 2018, which is less than five years prior to the date the distinctiveness claim was made.

 

Moreover, applicant’s Trademark Act Section 2(f) claim based on a prior registration is insufficient to show acquired distinctiveness because the acronym WI is disclaimed in the prior registration. See the attached registration. Without additional evidence, ownership of one prior registration in which the relevant wording is disclaimed is insufficient in this case to establish a claim of acquired distinctiveness under Trademark Act Section 2(f).  See 15 U.S.C. §1052(f); Kellogg Co. v. Gen. Mills, Inc., 82 USPQ2d 1766, 1771 n.5 (TTAB 2007); In re Candy Bouquet Int’l Inc., 73 USPQ2d 1883, 1890 (TTAB 2004); In re Helena Rubinstein, Inc., 131 USPQ 152, 153 (TTAB 1961); TMEP §1212.04(a). 

 

As an alternative to claiming acquired distinctiveness under Section 2(f), applicant may request to amend the application to seek registration on the Supplemental Register.  See 15 U.S.C. §1091(a); 37 C.F.R. §§2.47, 2.75(a); TMEP §§801.02(b), 816.  To amend to the Supplemental Register, the mark must be in lawful use in commerce; however, no specific length of use is required.  See 15 U.S.C. §1091(a); 37 C.F.R. §2.47(a); TMEP §815.02.

 

TRADEMARK ATTORNEY ADVISORY

 

Because of the legal technicalities and strict deadlines of the trademark application process, applicant is encouraged to hire a private attorney who specializes in trademark matters to assist in this process.  The assigned trademark examining attorney can provide only limited assistance explaining the content of an Office action and the application process.  USPTO staff cannot provide legal advice or statements about an applicant’s legal rights.  TMEP §§705.02, 709.06.  See Hiring a U.S.-licensed trademark attorney for more information. 

 

RESPONSE GUIDELINES

 

For this application to proceed, applicant must explicitly address each refusal and/or 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.

 

Please call or email the assigned trademark examining attorney with questions about this Office action. Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusals and requirement 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. 

 

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

 

 

/Rebecca Lee/

Examining Attorney

Law Office 122

(571) 272 - 7809

Rebecca.Lee1@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 July 07, 2020 for

U.S. Trademark Application Serial No. 88856005

 

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. 

 

 

/Rebecca Lee/

Examining Attorney

Law Office 122

(571) 272 - 7809

Rebecca.Lee1@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 July 07, 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.”