UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88065268
MARK: FLYER
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Kitty Hawk Corporation
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
ISSUE/MAILING DATE: 5/10/2019
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.
This Office action is in response to applicant’s communication filed on April 18, 2019.
Refusal of Registration under Trademark Act Section 2(e)(1) Continued and Maintained
The term “FLYER” is merely descriptive of applicant’s aircraft, air transportation services, and recreational aviation flight services. As shown by the attached evidence, “flyer” is defined and/or commonly used and known to reference a person or thing that flies, i.e., an airplane or aircraft, a pilot, aviator or other person who flies an aircraft, or passengers who travel by air in aircraft. Other businesses and entities similar to applicant incorporate the word “FLYER” in connection with the same or similar goods and services. See attached definitions of “flyer”, selected registrations in which “flyer” is disclaimed, copy of Applicant’s prior pending Application Serial No. 87371153 in which “flyer” is disclaimed, and selected excerpts from the Internet referencing common usage and understanding of “flyer” to mean an aircraft, a person who flies the aircraft, and/or a person who flies in the aircraft.
The main focus of applicant’s goods and services is to provide aircraft for recreational flights, provide air transportation services, and to provide recreational aviation flights in aircraft. “FLYER” as defined in the attached evidence is merely descriptive of all of those goods and services.
Further, applicant has admitted the descriptiveness of “FLYER” in its own pending Application Serial No. 87371153 for the mark “KITTY HAWK FLYER” in which “FLYER” is disclaimed for “aircraft”. See attached copy of Application Serial No. 87371153.
A mark does not need to be merely descriptive of all the goods or services specified in an application. In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); In re Franklin Cnty. Historical Soc'y, 104 USPQ2d 1085, 1089 (TTAB 2012). “A descriptiveness refusal is proper ‘if the mark is descriptive of any of the [goods or] services for which registration is sought.’” In re The Chamber of Commerce of the U.S., 675 F.3d at 1300, 102 USPQ2d at 1219 (quoting In re Stereotaxis Inc., 429 F.3d 1039, 1040, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005)).
Applicant has asserted that the word “flyer” is suggestive, not descriptive of Applicant’s goods and services. In support of this argument applicant notes various alternative definitions of “flyer” and uses of the word in connection with goods, services or persons with no connection to the goods and services in the instant application, i.e., “a leaflet or handbill advertising an event or product… a red toy wagon, a participant in acrobatic gymnastics…a National Hockey League team from Philadelphia…a reckless or speculative venture.” Applicant’s arguments are not persuasive.
The inquiry under Trademark Act Section 2(e)(1) is not whether a term has other meanings, but instead what a mark means in relation to the specific goods and services identified in the application record.
“FLYER” is commonly used and understood to reference aircraft, a person, pilot or aviator who flies the aircraft, and/or passengers in the aircraft. Applicant’s attention is directed to the attached evidence and the attached copy of applicant’s own application, Serial No. 87371153, in which applicant disclaimed “flyer” for aircraft. Given the disclaimer of “FLYER” in Serial No. 87371153, it is not clear why applicant deems “flyer” to be descriptive in pending Application Serial No. 87371153, and not descriptive in the instant application, which also covers aircraft. An ordinary purchaser would not need “imagination, thought, or perception” to see the descriptiveness of “FLYER” in the applied-for mark for the goods and services identified thereunder.
Descriptiveness is considered in relation to the relevant goods and/or services. DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012). “That a term may have other meanings in different contexts is not controlling.” In re Franklin Cnty. Historical Soc’y, 104 USPQ2d 1085, 1087 (TTAB 2012) (citing In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979)); TMEP §1209.03(e). “It is well settled that so long as any one of the meanings of a term is descriptive, the term may be considered to be merely descriptive.” In re Mueller Sports Med., Inc., 126 USPQ2d 1584, 1590 (TTAB 2018) (quoting In re Chopper Indus., 222 USPQ 258, 259 (TTAB 1984)).
For consumers the word “FLYER” viewed in connection with applicant’s goods and services will immediately convey with particularity the meaning of the word “FLYER” with reference to applicant’s aircraft, people who fly the aircraft, passengers who ride in the aircraft, air transportation services via the aircraft, and recreational aviation flights in the aircraft. The primary significance of “FLYER” in this context is so descriptive that simple, not multi-stage, reasoning is required to clearly see the connection between the mark and the identified goods and services. Other possible applications of the word “FLYER” to goods or services that are different from or unrelated to the goods and services identified of record for this application, are not germane to the instant inquiry which is limited to an examination of the descriptiveness of “FLYER” only in relation to the specific goods and services described in this application.
Response Guidelines and Requirements
Identification of Goods and Services Amendment Requirement Continued
A number of terms in the identification of goods and services as amended are indefinite and must be clarified. Applicant’s response to this requirement in the first Office action did not provide the required clarification. The wording shown in bold in the proposed amendment below provides guidance for this requirement. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Applicant must amend the identification to specify the common commercial or generic name of the goods and services. See TMEP §1402.01. If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses. If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language. See id.
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
Applicant may adopt the following wording in International Classes 12, 39 and 41, if accurate.
Please note that the wording shown in BOLD format either replaces indefinite wording or indicates wording that would be acceptable. The remaining terms not shown in BOLD are acceptable as submitted.
Class 12: Land vehicles; (“air or water vehicles…vehicles for travel by land, air, or water” are indefinite – specify the vehicles by common commercial names, e.g., aircraft, land vehicles, boats, etc.)
Class 39: Air transportation services; (“land transportation services” is indefinite – specify the services by common commercial names, e.g., transport by land; land transportation services by rail, truck and car for the carriage of passengers, mail, freight and cargo.)
Class 41: Acceptable as amended.
Information Required
To permit proper examination of the application, applicant must submit additional product information about the goods. 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 DTI P’ship LLP, 67 USPQ2d 1699, 1701-02 (TTAB 2003); TMEP §814. The requested product information should include fact sheets, instruction manuals, and/or advertisements. If these materials are unavailable, applicant should submit similar documentation for goods of the same type, explaining how its own product will differ. If the goods feature new technology and no competing goods are available, applicant must provide a detailed description of the goods.
The submitted factual information must make clear how the goods operate, their salient features, and their prospective customers and channels of trade. Conclusory statements regarding the goods will not satisfy this requirement.
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 at 1701-02; TMEP §814. Merely stating that information about the goods is available on applicant’s website is an inappropriate response to a request for additional information and is insufficient to make the relevant information of record. See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).
Information Required
Factual information about the services must clearly indicate what the services are and how they are rendered, their salient features, and their prospective customers and channels of trade. Conclusory statements regarding the services will not satisfy this requirement for information.
Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814. Merely stating that information about the services is available on applicant’s website is an insufficient response and will not make the relevant information of record. See In re Planalytics, 70 USPQ2d 1453, 1457-58 (TTAB 2004).
/Barbara A. Gold, Esq./
United States Patent and Trademark Office
Law Office 106
571/ 272-9165
571/ 273-9106 (fax)
Barbara.Gold@uspto.gov
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.