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 24, 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 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.

 

SUMMARY OF ISSUES:

 

• Refusal- Descriptiveness

 

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

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.

 

Determining the descriptiveness of a mark is done in relation to an applicant’s goods and/or services, the context in which the mark is being used, and the possible significance the mark would have to the average purchaser because of the manner of its use or intended use.  See In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (citing In re Bayer Aktiengesellschaft, 488 F.3d 960, 963-64, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)); TMEP §1209.01(b).  Descriptiveness of a mark is not considered in the abstract.  In re Bayer Aktiengesellschaft, 488 F.3d at 963-64, 82 USPQ2d at 1831.

 

Two major reasons for not protecting descriptive marks are (1) to prevent the owner of a descriptive mark from inhibiting competition in the marketplace and (2) to avoid the possibility of costly infringement suits brought by the trademark or service mark owner.  In re Abcor Dev. Corp., 588 F.2d 811, 813, 200 USPQ 215, 217 (C.C.P.A. 1978); TMEP §1209.  Businesses and competitors should be free to use descriptive language when describing their own goods and/or services to the public in advertising and marketing materials.  See In re Styleclick.com Inc., 58 USPQ2d 1523, 1527 (TTAB 2001).

 

“Marks that are merely laudatory and descriptive of the alleged merit of a product [or service] are . . . regarded as being descriptive” because “[s]elf-laudatory or puffing marks are regarded as a condensed form of describing the character or quality of the goods [or services].”  DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1256, 103 USPQ2d 1753, 1759 (Fed. Cir. 2012) (quoting In re The Boston Beer Co., 198 F.3d 1370, 1373, 53 USPQ2d 1056, 1058 (Fed. Cir. 1999)); see In re Nett Designs, Inc., 236 F.3d 1339, 1342, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (holding THE ULTIMATE BIKE RACK merely laudatory and descriptive of applicant’s bicycle racks being of superior quality); In re The Boston Beer Co., 198 F.3d at 1373-74, 53 USPQ2d at 1058-59 (holding THE BEST BEER IN AMERICA merely laudatory and descriptive of applicant’s beer and ale being of superior quality); TMEP §1209.03(k).  In fact, “puffing, if anything, is more likely to render a mark merely descriptive, not less so.”  DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d at 1256, 103 USPQ2d at 1759.

 

The term FOREMOST is a laudatory term describing something that is the best or most important.  See attached Internet/dictionary evidence (at http://www.collinsdictionary.com/dictionary/english/foremost).

 

 The word COPPER describes a metallic element that is an excellent conductor of heat and electricity, and widely used in electrical wiring, water pipes, and corrosion-resistant parts.  See attached Internet/dictionary evidence (at http://www.ahdictionary.com/word/search.html?q=copper). 

 

The phrase FOREMOST IN COPPER would be understood to describe things that are the best and made with copper or part of the copper industry.

 

The applicant’s services are promoting public awareness of the importance of products derived from metals, emerging technology, and future economic development in the mining industry. When the mark is applied to the applicant’s services, the consumer is immediately informed that the services feature promoting products and practices that are FORMOST IN COPPER that are the best products made with copper and practices in the copper industry.  Thus, the mark immediately describes a feature or characteristic of applicant’s services, and must be refused. 

 

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

 

Supplemental Register Information

Although an amendment to the Supplemental Register would normally be an appropriate response to this refusal(s), 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.

 

If applicant files an acceptable allegation of use and also amends to the Supplemental Register, the application effective filing date will be the date applicant met the minimum filing requirements under 37 C.F.R. §2.76(c) for an amendment to allege use.  TMEP §§816.02, 1102.03; see 37 C.F.R. §2.75(b).  In addition, the undersigned trademark examining attorney will conduct a new search of the USPTO records for conflicting marks based on the later application filing date.  TMEP §§206.01, 1102.03.

 

RESPONSE GUIDELINES 

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 refusal(s) and/or requirement(s) 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.    

 

 

/Joanna M. Shanoski/

Joanna M. Shanoski

Examining Attorney

Law Office 104

Phone: (571) 272-9707

E-mail:  Joanna.Shanoski@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 June 24, 2020 for

U.S. Trademark Application Serial No. 88861541

 

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. 

 

 

/Joanna M. Shanoski/

Joanna M. Shanoski

Examining Attorney

Law Office 104

Phone: (571) 272-9707

E-mail:  Joanna.Shanoski@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 24, 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.”