To: | Intercollegiate Women's Lacrosse Coaches ETC. (tom@vanderbloemenlaw.com) |
Subject: | U.S. Trademark Application Serial No. 88962722 - DEBUT - 00119 |
Sent: | March 23, 2021 09:57:52 AM |
Sent As: | ecom114@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88962722
Mark: DEBUT
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Correspondence Address:
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Applicant: Intercollegiate Women's Lacrosse Coaches ETC.
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Reference/Docket No. 00119
Correspondence Email Address: |
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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: March 23, 2021
This Office action is in response to applicant’s communication filed on March 15, 2021. The following requirements have been satisfied: amended identification of services in Class 35 only and deletion of any services in Class 41. TMEP §§713.02, 714.04.
The sections 1, 2, 3, and 45 informational wording refusal is withdrawn.
However, a new issue has arisen regarding the descriptiveness of the mark in connection with recruiting services.
Section 2(e)(1) Refusal – Merely Descriptive
Registration is refused because the applied-for mark merely describes a feature 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)).
The applicant applied to register the mark DEBUT for “organizing, conducting, and operating sports recruiting events for prospective college athletes in the field of lacrosse.”
As demonstrated by the attached entry from the online Macmillan dictionary, the term DEBUT is defined as “the first time that a performer or sports player appears in public.”
The services feature sporting events where high school athletes make their recruiting debut to prospective colleges. Moreover, applicant’s identification indicates it offers “sports recruiting events for prospective college athletes.” Therefore, DEBUT merely describes a feature of applicant’s services.
For the above reasons, the proposed mark DEBUT directly and immediately conveys information about applicant’s services. Accordingly, the proposed mark is merely descriptive, and registration is properly refused on the Principal Register under section 2(e)(1).
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
Suggest Amendment to 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.
Request for Information—Descriptiveness
Due to the descriptive nature of the applied-for mark, applicant must provide the following information regarding the goods and/or services and wording appearing in the mark:
(1) Fact sheets, instruction manuals, brochures, advertisements and pertinent screenshots of applicant’s website as it relates to the goods and/or services. Merely stating that information about the goods and/or services is available on applicant’s website is insufficient to make the information of record.
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 goods and/or services feature new technology and information regarding competing goods and/or services is not available, applicant must provide a detailed factual description of the goods and/or 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
(2) Applicant must respond to the following questions: Are the sports recruiting events the debut of the high school athletes?
See 37 C.F.R. §2.61(b); In re AOP LLC, 107 USPQ2d 1644, 1650-51 (TTAB 2013); In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004); TMEP §§814, 1402.01(e).
Failure to comply with a request for information can be grounds for refusing registration. In re AOP LLC, 107 USPQ2d at 1651; In re DTI P’ship LLP, 67 USPQ2d 1699, 1701-02 (TTAB 2003); TMEP §814.
How to respond. Click to file a response to this nonfinal Office action.
/William T. Verhosek/
William T. Verhosek
Trademark Examining Attorney
USPTO/Law Office 114
571-272-9464
william.verhosek@uspto.gov
RESPONSE GUIDANCE