|To:||Royal Caribbean Cruises Ltd. (firstname.lastname@example.org)|
|Subject:||U.S. Trademark Application Serial No. 88881222 - EMUSTER - N/A|
|Sent:||June 29, 2020 09:56:56 AM|
|Attachments:||Attachment - 1
Attachment - 2
Attachment - 3
Attachment - 4
Attachment - 5
Attachment - 6
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88881222
Applicant: Royal Caribbean Cruises Ltd.
Reference/Docket No. N/A
Correspondence Email Address:
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 29, 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 has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
SUMMARY OF ISSUES:
SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
Registration is refused because the applied-for mark merely describes a significant 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.
Applicant is seeking registration for the mark EMUSTER (in standard character form) for “cruise ship services; transportation of passengers by cruise ship” in International Class 39.
A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use 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)).
Moreover, “[a] mark may be merely descriptive even if it does not describe the ‘full scope and extent’ of the applicant’s goods or services.” In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004) (citing In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1346, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001)); TMEP §1209.01(b). It is enough if a mark describes only one significant function, attribute, or property. 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); see In re Oppedahl & Larson LLP, 373 F.3d at 1173, 71 USPQ2d at 1371.
In this case, the examining attorney has attached evidence from Merriam-Webster and Acronym Finder showing that the letter “e” used as a prefix has become commonly recognized as a designation for services that are electronic in nature or are sold or provided electronically. Additional attached evidence from Royal Caribbean, Cruise Critic, and Wikipedia shows that the term “MUSTER” is commonly used on cruise ships to describe safety drills wherein passengers practice gathering at designated “muster” stations in the event of an emergency.
When a mark consists of the “e” prefix coupled with a descriptive word or term for electronic services, then the entire mark may be considered merely descriptive under Trademark Act Section 2(e)(1). See In re SPX Corp., 63 USPQ2d 1592 (TTAB 2002) (holding E-AUTODIAGNOSTICS merely descriptive of an electronic engine analysis system comprised of a hand-held computer and related computer software); In re Styleclick.com Inc., 57 USPQ2d 1445 (TTAB 2000) (holding E FASHION merely descriptive of software for consumer use in shopping via a global computer network and of electronic retailing services); TMEP §1209.03(d).
Considering the above, when considered as a composite whole and in the context of applicant’s identified services, consumers will immediately understand the applied-for mark as merely communicating the knowledge that applicant provides means for participating in electronic muster drills as part of its cruises. Accordingly, registration is refused pursuant to Trademark Act Section 2(e)(1).
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration. However, if applicant responds to the refusal, applicant must also respond to the requirement set forth below.
RULE 2.61(b) REQUEST FOR INFORMATION ABOUT APPLICANT’S SERVICES
(1) Fact sheets, instruction manuals, brochures, advertisements and pertinent screenshots of applicant’s website as it relates to the services in the application, including any materials using the terms in the applied-for mark. Merely stating that information about the services 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 and services of the same type, explaining how its own product or services will differ. If the services feature new technology and information regarding competing services is not available, applicant must provide a detailed factual description of the services. Factual information about the goods must make clear how they operate, salient features, and prospective customers and channels of trade. For services, the factual information must make clear what the services are and how they are rendered, 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:
· Does applicant provide, or does applicant intend to provide, cruise ship muster drills via electronic, digital, or otherwise non-physical means in connection with its cruise ship services?
· Does applicant provide, or does applicant intend to provide electronic, digital, or otherwise non-physical muster stations on its ships in connection with its cruise ship services?
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.
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.
How to respond. Click to file a response to this nonfinal Office action.
/Kyle D. Simcox/
Trademark Examining Attorney
U.S. Patent and Trademark Office
Law Office 122