Priority Action

United States Patent and Trademark Office (USPTO)

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

 

 

 

PRIORITY ACTION

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:  February 24, 2021

 

 

Applicant must address issues shown below.  On 17 February 2021, the examining attorney and Russell F. Rowen, applicant’s attorney, discussed the issues below.  Applicant must timely respond to these issues.  See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §708.05.

 

This Office action is supplemental to and supersedes the previous Office action issued on 15 June 2020, in connection with this application.  The assigned trademark examining attorney inadvertently omitted a refusal of registration relevant to the mark in the subject application.  See TMEP §§706, 711.02.  Specifically, the mark is merely descriptive of the applied-for goods.

 

The trademark examining attorney apologizes for any inconvenience caused by the delay in raising this issue. 

 

Applicant must address all issue raised in this Office action. 

 

Further, the following refusal raised in the 15 June 2020, Office action has been satisfied:  acceptable specimen provided.  See TMEP §713.02.

 

The following is a SUMMARY OF ISSUES that applicant must address:

 

            •  NEW ISSUE:  Section 2(e)(1) Refusal – Merely Descriptive

 

Applicant must respond to all issues raised in this Office action within six (6) months of the date of issuance of this Office action.  37 C.F.R. §2.62(a); see TMEP §711.02.  If applicant does not respond within this time limit, the application will be abandoned.  37 C.F.R. §2.65(a).

 

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

Applicant’s applied-for mark is MALIBU in standard character form for “Non-metal building materials, namely, tile made of stone, cement, brick and terracotta” in International Class 19.

 

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

 

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

 

The attached evidence from the Los Angeles Times, Adamson House, and Wikipedia shows that Malibu tiles reflect a style of design reminiscent of the tiles produced by Malibu Potteries in the early 1920s by using contrasting glaze colors and geometric patterns.  Accordingly, consumers will understand that the mark MALIBU describes tiles with contrasting glaze colors and geometric patterns inspired by Malibu Potteries’ tiles.  In fact, applicant’s own website states that its tiles are “inspired by the tile making craft of turn-of-the-century malibu, california.”

 

Furthermore, the attached evidence from Avente Tile, Malibu Ceramic Works, Tierra y Fuego, Mexican Tiles, and Ceramic Concepts shows that third-parties commonly use the term “Malibu” to refer to tiles that evoke the style of tile made by Malibu Potteries in the early 1920s.

 

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).

 

MALIBU describes a characteristic of the applied-for goods and is therefore a word that providers of these goods need to be able to use to describe and advertise them.

 

Conclusion

Based on the evidence and analysis above, applicant’s applied-for mark is merely descriptive and must be refused under Section 2(e)(1) of the Lanham Act.

 

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

 

Supplemental Register Advisory

The applied-for mark has been refused registration on the Principal Register.  Applicant may respond to the 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 the refusal(s).  TMEP §816.04.

 

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.

 

 

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

 

 

/Douglas A. Mondell/

Douglas A. Mondell, Esq.

Law Office 127

(571) 272-0120

douglas.mondell@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS 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 February 24, 2021 for

U.S. Trademark Application Serial No. 88900305

 

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. 

 

 

/Douglas A. Mondell/

Douglas A. Mondell, Esq.

Law Office 127

(571) 272-0120

douglas.mondell@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 February 24, 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.”