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:  September 09, 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:

• Section 2(e)(1) Refusal – Merely Descriptive
• Specimen Unacceptable

 

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

 

Registration is refused because the applied-for mark merely describes features and/or a purpose 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.

 

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)). 

 

In this case, applicant has applied to register “GLOBALPOST” for “arranging for pickup, delivery, consolidation, and transportation of packages; freight management services, namely, shipment processing, preparing shipping documents and invoices, and tracking documents, packages and freight for business purposes”.  The applied-for mark merely describes features and/or a purpose of applicant’s services because applicant’s services are provided worldwide and feature, are intended to provide, or otherwise relate to delivered parcels.

 

Attached to this Office action are definitions for the individual terms in the applied-for mark.  Specifically, the term “GLOBAL” means “of, or relating to, or including the whole earth, worldwide” and the term “POST” means delivered parcels. See http://www.collinsdictionary.com/us/dictionary/english/global; http://www.lexico.com/en/definition/post.  In its identification, applicant indicates that its services are arranging for pickup, delivery, consolidation and transportation of packages as well as various freight management services.  Additionally, applicant’s specimen of record indicates that its services feature “a range of domestic and international shipping solutions” and are intended to “help e-commerce and warehouse sellers succeed domestically and around the world.”  See Application pg. # 6.  Thus, the wording “GLOBAL” merely describes a feature of applicant’s services, namely, the scope of its services as being worldwide.  The wording “POST” merely describes a feature and/or purpose of applicant’s services because applicant’s services feature, are intended to provide, or otherwise relate to delivered parcels.  Therefore, the individual components of the applied-for mark merely describe features and/or a purpose of applicant’s services.

 

Generally, 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 Tower Tech, Inc., 64 USPQ2d 1314, 1317-18 (TTAB 2002) (holding SMARTTOWER merely descriptive of “commercial and industrial cooling towers and accessories therefor, sold as a unit”); In re Sun Microsystems, Inc., 59 USPQ2d 1084, 1087 (TTAB 2001) (holding AGENTBEANS merely descriptive of “computer software for use in the development and deployment of application programs on a global computer network”); In re Putnam Publ’g Co., 39 USPQ2d 2021, 2022 (TTAB 1996) (holding FOOD & BEVERAGE ON-LINE merely descriptive of “a news and information service updated daily for the food processing industry, contained in a database”); In re Copytele, Inc., 31 USPQ2d 1540, 1542 (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).

In this case, both the individual components and the composite result are descriptive of applicant’s goods and/or services and do not create a unique, incongruous, or nondescriptive meaning in relation to the goods and/or services.  Specifically, when taken together and applied to applicant’s services, the applied-for mark “GLOBALPOST” immediately describes that applicant’s services are provided worldwide and feature delivered parcels.  Thus, the individual components of a mark retain their descriptive meaning in relation to the services, resulting in a composite mark that is itself descriptive and not registrable.

 

Conclusion

 

Accordingly, the applied-for mark “GLOBALPOST” is merely descriptive of applicant’s services and as a result, registration is refused under Section 2(e)(1) of the Trademark Act.

 

Applicant should note the following advisory.

 

ADVISORY – SUPPLEMENTAL REGISTER

 

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.

 

Although registration on the Supplemental Register does not afford all the benefits of registration on the Principal Register, it does provide the following advantages to the registrant:

 

(1)        Use of the registration symbol ® with the registered mark in connection with the designated goods and/or services, which provides public notice of the registration and potentially deters third parties from using confusingly similar marks.

 

(2)        Inclusion of the registered mark in the USPTO’s database of registered and pending marks, which will (a) make it easier for third parties to find it in trademark search reports, (b) provide public notice of the registration, and thus (c) potentially deter third parties from using confusingly similar marks.

 

(3)        Use of the registration by a USPTO trademark examining attorney as a bar to registering confusingly similar marks in applications filed by third parties.

 

(4)        Use of the registration as a basis to bring suit for trademark infringement in federal court, which, although more costly than state court, means judges with more trademark experience, often faster adjudications, and the opportunity to seek an injunction, actual damages, and attorneys’ fees and costs.

 

(5)        Use of the registration as a filing basis for a trademark application for registration in certain foreign countries, in accordance with international treaties.

 

See 15 U.S.C. §§1052(d), 1091, 1094; J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition §§19:33, 19:37 (rev. 4th ed. Supp. 2017).

 

To amend the application to the Supplemental Register, applicant must provide a written statement requesting that the application be amended to the Supplemental Register.  TMEP §816.01; see 15 U.S.C. §1091; 37 C.F.R. §2.47.

 

Applicant should note the following additional ground for refusal.

 

SPECIMEN UNACCEPTABLE

 

Webpage specimen does not include required URL and/or date printed/accessed.  Registration is refused because the specimen is not acceptable as a webpage specimen; it lacks the required URL and/or date printed/accessed.  See 37 C.F.R. §2.56(c); Mandatory Electronic Filing & Specimen Requirements, Examination Guide 1-20, at V.B. (Rev. Feb. 2020).  The specimen thus appears to be in the nature of a digital mockup that fails to show the applied-for mark in actual use in commerce.  See Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.03(g), 904.07(a).  An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark as actually used in commerce for each international class of goods and services identified in the application or amendment to allege use.  15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).

 

A webpage submitted as a specimen must include the URL and access or print date to show actual use in commerce.  37 C.F.R. §2.56(c).  Because the webpage specimen lacks the access or print date on it, within the TEAS form used to submit the specimen, or in a verified statement in a later-filed response, it is unacceptable to show use of the mark in commerce. 

 

Examples of specimens.  Specimens for goods include a photograph of (1) the actual goods bearing the mark; (2) an actual container, packaging, tag or label for the goods bearing the mark; or (3) a point-of-sale display showing the mark directly associated with the goods.  See 37 C.F.R. §2.56(b)(1), (c); TMEP §904.03(a)-(m).  A webpage specimen submitted as a display associated with the goods must show the mark in association with a picture or textual description of the goods and include information necessary for ordering the goods.  TMEP §904.03(i); see 37 C.F.R. §2.56(b)(1), (c). 

 

Specimens for services must show a direct association between the mark and the services and include:  (1) copies of advertising and marketing material, (2) a photograph of business signage or billboards, or (3) materials showing the mark in the sale, rendering, or advertising of the services.  See 37 C.F.R. §2.56(b)(2), (c); TMEP §1301.04(a), (h)(iv)(C). 

 

Response options.  Applicant may respond to this refusal by satisfying one of the following for each applicable international class:

 

(1)        Submit a verified statement, in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20 or 28 U.S.C. §1746, specifying the URL of the original webpage specimen and the date it was accessed or printed.

 

(2)        Submit a different specimen (a verified “substitute” specimen), including the URL and date accessed/printed on it, that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the goods and/or services identified in the application or amendment to allege use.  Applicant must also submit the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20:  “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.”

 

(3)        Amend the filing basis to intent to use under Section 1(b) (which includes withdrawing an amendment to allege use, if one was filed), as no specimen is required before publication.  This option will later necessitate additional fee(s) and filing requirements, including a specimen.

 

For an overview of the response options referenced above and instructions on how to satisfy these options using the online Trademark Electronic Application System (TEAS) form, see the Specimen webpage.  

 

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

 

ASSISTANCE

 

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.    

 

Rhoda Nkojo

/Rhoda Nkojo/

Examining Attorney

Law Office 117

(571) 272-8468

Rhoda.Nkojo@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 September 09, 2020 for

U.S. Trademark Application Serial No. 88950238

 

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. 

 

 

Nkojo, Rhoda

Examining Attorney

Law Office 117

(571) 272-8468

Rhoda.Nkojo@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 September 09, 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.”