Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  July 20, 2021

 

This Office action is in response to applicant’s communication filed on March 11, 2021.

 

In a previous action dated June 29, 2020, the examining attorney refused registration of the applied-for mark as merely descriptive pursuant to Trademark Act Section 2(e)(1). Additionally, the examining attorney required applicant to provide additional information about its services.

 

Based on applicant’s response, the examining attorney notes that the additional information requirement has satisfied.

 

For the reasons stated below, the refusal to register under Trademark Act Section 2(e)(1) is maintained and now made FINAL. See 15 U.S.C. §1052(e)(1); 37 C.F.R. §2.63(b).

 

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.

 

SUMMARY OF ISSUES MADE FINAL:

 

·         Section 2(e)(1) Refusal – Merely Descriptive

 

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

 

Registration was previously 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.

 

The examining attorney has carefully considered applicant’s arguments, but has found them unpersuasive for the reasons set forth below. Accordingly, the refusal to register under Trademark Act Section 2(e)(1) is maintained and now made FINAL. See 15 U.S.C. §1052(e)(1); 37 C.F.R. §2.63(b).

 

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)). 

 

In this case, the examining attorney previously evidence 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, and 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).

 

Furthermore, the examining attorney has here attached evidence from Royal Caribbean, Cruise Radio, and Cruise Critic showing that applicant’s “EMUSTER” services entail a streamlining of the classic muster drill by enabling consumers to conduct “key elements of the drill” through use of their personal electronic devices. Additional attached evidence from Royal Caribbean Blog, Cruise Critic, Aronfeld Trial Attorneys, and Cruise Ship Crayz shows that this services is specifically described as an “electronic muster drill.”

 

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 they will be able to partake in applicant’s muster drills electronically through use of personal electronic devices. In other words, applicant provides “e-muster” drills.

 

Applicant contends that the mark is not merely descriptive because “cruise ship services are not electronic in nature” and because consumers will still be required to physically visit the designated muster station in order to complete the drill. The examining attorney is unpersuaded.

 

“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. Here, the applicant’s own marketing materials attached as evidence show that the “EMSUTER” services allows consumers to electronically engage in “key elements of the drill.” As such, the mark describes at least one significant feature or attribute of applicant’s cruise ship services, namely, that consumers can partake electronically in significant elements of the muster drills.

 

Accordingly, for the reasons set forth above, the refusal to register pursuant to Trademark Act Section 2(e)(1) is maintained and now made FINAL.

 

How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

 

/Kyle D. Simcox/

Trademark Examining Attorney

U.S. Patent and Trademark Office

Law Office 122

(571) 272-7851

Kyle.Simcox@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 20, 2021 for

U.S. Trademark Application Serial No. 88881222

 

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. 

 

 

/Kyle D. Simcox/

Trademark Examining Attorney

U.S. Patent and Trademark Office

Law Office 122

(571) 272-7851

Kyle.Simcox@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 20, 2021, 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.”