To: | GORUCK HOLDINGS, LLC (trademarks@offitkurman.com) |
Subject: | U.S. Trademark Application Serial No. 90016154 - RUCK PLATES - 220183.00034 |
Sent: | March 01, 2021 06:20:56 PM |
Sent As: | ecom114@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90016154
Mark: RUCK PLATES
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Correspondence Address:
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Applicant: GORUCK HOLDINGS, LLC
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Reference/Docket No. 220183.00034
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 01, 2021
PLEASE NOTE: The examining attorney has attempted to contact the applicant to resolve the below issues; however, there was no response. Please call or email the assigned trademark examining attorney to resolve the issues in this Office action. Although the USPTO does not accept emails as responses to Office actions, communication by phone or email is permissible to agree to proposed amendments to the application that will immediately place the application in condition for publication, registration, or suspension. See 37 C.F.R. §2.62(c); TMEP §707.
This Office action is supplemental to and supersedes the previous Office action issued on October 6, 2020 in connection with this application. Based on information and/or documentation in applicant’s response, the trademark examining attorney now issues the following new requirement: Disclaimer Statement Required. See TMEP §§706, 711.02.
In a previous Office action(s) dated October 6, 2020, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(e)(1) Refusal – Merely Descriptive; Specimen Refusal – Does Not Include URL and Date Accessed
Based on applicant’s response, the trademark examining attorney notes that the refusals have been obviated and are now withdrawn. See TMEP §713.02.
The following is a SUMMARY OF ISSUES that applicant must address:
• NEW ISSUE: Disclaimer Statement Required
Disclaimer Statement Required
In this case, applicant must disclaim the wording “PLATES” because it is not inherently distinctive. This unregistrable term is generic for applicant’s goods and/or services and is thus an unregistrable component of the mark. See 15 U.S.C. §1052(e)(1); In re Am. Inst. of Certified Pub. Accountants, 65 USPQ2d 1972, 1981-85 (TTAB 2003); TMEP §§1212.02(e), 1213.03(b).
“A mark is generic if its primary significance to the relevant public is the class or category of goods or services on or in connection with which it is used.” TMEP §1209.01(c)(i) (citing H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 989-90, 228 USPQ 528, 530 (Fed. Cir. 1986); In re ActiveVideo Networks, Inc., 111 USPQ2d 1581, 1600 (TTAB 2014)). Determining whether a mark is generic requires a two-step inquiry:
(1) What is the genus of goods and/or services at issue?
(2) Does the relevant public understand the designation primarily to refer to that genus of goods and/or services?
H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d at 989-90, 228 USPQ at 530; In re Meridian Rack & Pinion, 114 USPQ2d 1462, 1463 (TTAB 2015); TMEP §1209.01(c)(i).
Regarding the first part of the inquiry, the genus of goods and/or services is often defined by an applicant’s identification of goods and/or services. In re Meridian Rack & Pinion, 114 USPQ2d at 1463.
In this case, the application identifies the goods and/or services as “Exercise equipment, namely, weighted plates”, which adequately defines the genus at issue.
Regarding the second part of the inquiry, the relevant public is the purchasing or consuming public for the identified goods and/or services. Sheetz of Del., Inc. v. Doctor’s Assocs. Inc., 108 USPQ2d 1341, 1351 (TTAB 2013). In this case, the relevant public comprises ordinary consumers who purchase applicant’s goods, because there are no restrictions or limitations to the channels of trade or classes of consumers. The attached evidence from Merriam-Webster shows that the wording “PLATES” in the applied-for mark means “a thin, flat piece of metal” and thus the relevant public would understand this designation to refer primarily to the genus of goods because the goods are in fact, plates. See attached evidence from Origin Fitness, Tredder, Zion, and Dick’s showing third parties using the term PLATES to describe weighted exercise plates. See also, applicant’s prior registration for the same mark for similar goods on the Supplemental Register, with the word PLATE disclaimed, which is further evidence that this term is generic for the goods.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “PLATES” apart from the mark as shown.
For an overview of disclaimers and instructions on how to provide one using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
Response Guidelines
Please call or email the assigned trademark examining attorney with questions about this Office action. 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.
Bechhofer, Yocheved
/Yocheved Bechhofer/
Examining Attorney
Law Office 114
571-272-9329
Yocheved.Bechhofer@uspto.gov
RESPONSE GUIDANCE