To: | Digital Music Consortium (docket@jpglegal.com) |
Subject: | U.S. Trademark Application Serial No. 88907379 - SOUNDS OF NATURE RELAXATION - N/A |
Sent: | August 11, 2020 09:11:47 AM |
Sent As: | ecom103@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88907379
Mark: SOUNDS OF NATURE RELAXATION
|
|
Correspondence Address: |
|
Applicant: Digital Music Consortium
|
|
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: August 11, 2020
SEARCH OF USPTO DATABASE OF MARKS
SECTION 2(e)(1) REFUSAL – MERELY DESCRIPTIVE
If the individual components of a mark retain their descriptive meaning in relation to the goods and/or 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., In re Franklin Cnty. Historical Soc’y, 104 USPQ2d 1085, 1086 (TTAB 2012) (holding CENTER OF SCIENCE AND INDUSTRY merely descriptive of operating a museum and conducting workshops, programs, and demonstrations in the field of science); In re Phoseon Tech., Inc., 103 USPQ2d 1822, 1823 (TTAB 2012) (holding SEMICONDUCTOR LIGHT MATRIX merely descriptive of light and UV curing systems composed primarily of light-emitting diodes (LEDs) for industrial and commercial applications); In re Putman Publ’g Co., 39 USPQ2d 2021, 2021-22 (TTAB 1996) (holding FOOD & BEVERAGE ON-LINE merely descriptive of news and information service for the food processing industry); In re Copytele, Inc., 31 USPQ2d 1540, 1541-42 (TTAB 1994) (holding SCREEN FAX PHONE merely descriptive of facsimile terminals employing electrophoretic displays).
Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the goods and/or 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).
Applicant is seeking registration of the mark SOUNDS OF NATURE RELAXATION in standard characters for “Providing online non-downloadable visual and audio recordings featuring background noise, white noise, music, and sound masking” in International Class 41.
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.
As shown by the attached dictionary evidence, the term “SOUND” (the singular form of “SOUNDS”) refers to recorded auditory material or noise; the term “NATURE” is used to describe the world of living things and the outdoors; and the term “RELAXATION” is used to describe the refreshment of body or mind.
In addition, the attached Internet evidence from Headspace.com, Explore-Life.com, Amazon®, the Microsoft® Store, and Youtube® shows that “SOUNDS OF NATURE” and “RELAXATION” (or other forms of the root word “RELAX”) are commonly used together in a descriptive manner by third parties to describe audio recordings of noises from the world of living things and the outdoors that help people refresh their body and/or mind.
Applicant’s identification of services is worded broadly enough to include audio recordings of noises from the world of living things and the outdoors that help people refresh their body and/or mind. Thus, the mark SOUNDS OF NATURE RELAXATION is merely descriptive of applicant’s services because consumers encountering the mark in connection with applicant’s services would immediately understand that applicant’s online non-downloadable audio recordings feature noises from the world of living things and the outdoors that help people refresh their body and/or mind (i.e., “SOUNDS OF NATURE RELAXATION”).
Accordingly, applicant’s mark is refused registration under Section 2(e)(1) of the Trademark Act.
APPLICANT MAY RESPOND
Although applicant’s mark has been refused registration, applicant may respond to the refusals by submitting evidence and arguments in support of registration. Applicant should also note the advisory below.
FIVE YEARS’ USE INSUFICIENT FOR CLAIM OF ACQUIRED DISTINCTIVENESS
Applicant asserted a claim of acquired distinctiveness under Trademark Act Section 2(f) based on use of the mark in commerce with services for five years prior to the date on which the claim is made. See 15 U.S.C. §1052(f). However, as the above-referenced evidence demonstrates, the allegation of five years’ use is insufficient to show acquired distinctiveness because the applied-for mark is highly descriptive of applicant’s services. See In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 1336-37, 116 USPQ2d 1262, 1265 (Fed. Cir. 2015); In re Virtual Indep. Paralegals, LLC, 2019 USPQ2d 111512, at *11-12 (TTAB 2019); TMEP §1212.05(a). An applicant’s evidentiary burden of showing acquired distinctiveness increases with the level of descriptiveness of the mark sought to be registered; as in this case, a more descriptive term requires more evidence. Royal Crown Co. v. Coca-Cola Co., 892 F.3d 1358, 1365, 127 USPQ2d 1041, 1045 (Fed. Cir. 2018) (citing In re Steelbuilding.com, 415 F.3d 1293, 1300, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005)). As the mark in this case is highly descriptive, applicant’s evidence is not sufficient to show acquired distinctiveness.
Applicant may respond by providing additional evidence of acquired distinctiveness, such as verified statements of long term use, advertising and sales expenditures, examples of advertising, affidavits and declarations of consumers, customer surveys. See 37 C.F.R. §2.41(a)(3); TMEP §§1212.02(g), 1212.06 et seq.
When determining whether the evidence shows the mark has acquired distinctiveness, the trademark examining attorney will consider the following six factors: (1) association of the mark with a particular source by actual purchasers (typically measured by customer surveys linking the name to the source); (2) length, degree, and exclusivity of use; (3) amount and manner of advertising; (4) amount of sales and number of customers; (5) intentional copying; and (6) unsolicited media coverage. See Converse, Inc. v. ITC, 909 F.3d 1110, 1120, 128 USPQ2d 1538, 1546 (Fed. Cir. 2018) (“the Converse factors”). “[N]o single factor is determinative.” In re Steelbuilding.com, 415 F.3d at 1300, 75 USPQ2d at 1424; see TMEP §§1212.06 et seq. Rather, all factors are weighed together in light of all the circumstances to determine whether the mark has acquired distinctiveness. In re Steelbuilding.com, 415 F.3d at 1300, 75 USPQ2d at 1424. This evidence must demonstrate that the relevant public understands the primary significance of the mark as identifying the source of applicant’s product or service rather than identifying the product or service itself. In re Steelbuilding.com, 415 F.3d at 1297, 75 USPQ2d at 1422.
As well as submitting additional evidence, applicant may respond to the refusal by arguing in support of registration and/or amending 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 §816. If applicant amends the application to the Supplemental Register, applicant is not precluded from submitting evidence and arguments against this refusal. TMEP §816.04.
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.
/Joshua Sturman/
Trademark Examining Attorney
Law Office 103
(571) 270-0355
Joshua.Sturman@uspto.gov
RESPONSE GUIDANCE