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:  December 28, 2020

 

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues 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 registered marks that would bar registration under Trademark Act Section 2(d).  15 U.S.C. §1052(d); TMEP §704.02.  However, a mark in a prior-filed pending application may present a bar to registration of applicant’s mark.

 

 

SUMMARY OF ISSUES:

• Section 2(d) Advisory – Prior-Filed Application
• Sections 1, 2 and 45 Refusal – Failure to Function as a Trademark
• Identification of Goods
• Applicant May Wish to Hire Trademark Counsel

 

 

SECTION 2(d) ADVISORY - PRIOR-FILED APPLICATION

 

The filing date of pending U.S. Application Serial No. 90054970 precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

SECTIONS 1, 2 AND 45 REFUSAL – FAILURE TO FUNCTION AS A TRADEMARK

 

Registration is refused because the applied-for mark is a slogan or term that does not function as a trademark or service mark to indicate the source of applicant’s goods and to identify and distinguish them from others.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051-1053, 1127.  In this case, the applied-for mark is an informational social, political, religious, or similar kind of message that merely conveys support of, admiration for, or affiliation with the ideals conveyed by the message.  See In re Wal-Mart Stores, Inc., 129 USPQ2d 1148, 1160 (TTAB 2019) (holding INVESTING IN AMERICAN JOBS not registrable for retail store services or promoting public awareness of goods made or assembled by American workers because the mark would be perceived as a phrase “commonly used in the marketplace to convey a particular social and economic informational message”); In re Hulting, 107 USPQ2d 1175, 1177-79 (TTAB 2013) (holding NO MORE RINOS!, a slogan meaning “No More Republicans In Name Only,” not registrable for a variety of paper items, shirts, and novelty buttons because the mark would be perceived merely as a commonly used political message); TMEP §1202.04(b). 

 

Terms and phrases that merely convey an informational message are not registrable.  See In re Eagle Crest, Inc., 96 USPQ2d at 1229.  Determining whether a term or phrase functions as a trademark or service mark depends on how it would be perceived by the relevant public.  In re Wal-Mart Stores, Inc., 129 USPQ2d at 1150 (citing D.C. One Wholesaler, Inc. v. Chien, 120 USPQ2d 1710, 1713 (TTAB 2016)); In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229 (TTAB 2010); TMEP §1202.04.  “The more commonly a [term or phrase] is used, the less likely that the public will use it to identify only one source and the less likely that it will be recognized by purchasers as a trademark [or service mark].”  In re Hulting, 107 USPQ2d at 1177 (quoting In re Eagle Crest, Inc., 96 USPQ2d at 1229); TMEP §1202.04(b).

 

The attached evidence from third-party websites shows that this term or phrase is a commonly used message that conveys that Kamala Harris will become the next vice president of the United States, becoming the first female vice president, in addition to being the first vice president of both African American and Asian American descent.  See http://www.forbes.com/sites/jemimamcevoy/2020/11/07/kamala-harris-makes-history-as-first-female-black-asian-american-vice-president/?sh=588cc1993012 (explaining that Kamala Harris will be the first woman, Asian-American, and African-American to be vice president); see also, e.g., the following attached third-party evidence featuring the same or similar phrasing on t-shirts, stickers, and facemasks:

 

-          Amazon

o   Seller My VP Looks Like Me showing a design of a little girl above the wording “The VP Looks Like Me”:  http://www.amazon.com/VP-Looks-Like-Me-T-Shirt/dp/B08MZZ1S3B

o   Seller My VP Looks Like Me offering a t-shirt design with the stylized wording “My VP Looks Like Me”:  http://www.amazon.com/My-VP-Looks-Like-Me/dp/B08MZ9SWJS

o   Seller AKA Kamala Harris 2020 Black Educated providing a t-shirt with a design of a little girl alongside the stylized wording “Our VP Looks Like Me”:  http://www.amazon.com/AKA-President-Kamala-Harris-T-Shirt/dp/B08N6DRHFJ

o   Seller Madame Vice President Kamala Harris Looks Like Me with a t-shirt featuring a picture of Kamala Harris with her name directly below her picture, all underneath the stylized wording “Madam Vice President”, and with the stylized wording “My VP Looks Like Me” at the very bottom of the design: http://www.amazon.com/Madam-Vice-President-Kamala-T-Shirt/dp/B08N6FB5CK

-          Pop Threads (providing an ornamental and stylized design of the wording “The V.P. Looks Like Me”):  http://popthreads.com/the-vp-looks-like-me-vice-president-kamala-harris/

-          Say With Ya Face (showing a variety of cloth face masks featuring the stylized wording “The VP Looks Like Me”):  http://sayitwithyaface.com/products/the-vp-looks-like-me-cooling-face-mask

-          Redbubble (selling a sticker for application on laptops, windows, water bottles and more, with the stylized wording “The VP Looks Just Like Me”):  http://www.redbubble.com/i/sticker/looks-like-me-kamala-harris-for-kids-by-Hey-Nice-Shirt/62282081.EJUG5

-          Etsy

o   Seller DavisDesignAgy with a selection of sweatshirts featuring the wording “My VP Looks Like Me”:  http://www.etsy.com/listing/918128953/the-vp-looks-like-me-long-sleeve-women?ref=shop_home_active_10

o   Seller MoreThanaMrs with t-shirts featuring the wording “Our VP Looks Like Me.” Over a circular representation of the American Flag:  http://www.etsy.com/listing/886278840/kamala-harris-black-vice-president-our?ref=listing_favoriter&atr_uid=82321353

-          2020 Trending Tees (showing a design of Kamala Harris walking and her shadow is a silhouette of a little girl, with the wording “My VP Looks Like Me” above and the wording “Madam Vice President Kamala Harris” below):  http://2020trendingtees.com/product/my-vp-looks-like-me-madam-vice-president-kamala-harris-shirt/

-          Lawtina Shop (offering several designs of t-shirts, tote bags, posters, and jewelry in a collection called “Our VP Looks Like Me!”):  http://lawtinajd.com/collections/our-vp-is-brown

 

In fact, even applicant’s website explains that “we will have a woman in the White House who will look like our mothers, sisters, daughters and friends,” when explaining the company is supporting representation of marginalized groups, and advocates for social justice and equality.  See http://vplikeme.com/pages/about-us.  Because consumers are accustomed to seeing this message used in ordinary language by many different sources, they would not perceive it as a mark that identifies the source of applicant’s goods but rather only as conveying an informational message.

 

An applicant may not overcome this refusal by amending the application to seek registration on the Supplemental Register or asserting a claim of acquired distinctiveness under Section 2(f).  TMEP §1202.04(d); see In re Eagle Crest, Inc., 96 USPQ2d at 1229.  Nor will submitting a substitute specimen overcome this refusal.  See TMEP §1202.04(d).

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusal, applicant must also respond to the requirements set forth below.

 

IDENTIFICATION OF GOODS

 

Applicant must correct the punctuation in the identification to clarify the individual items in the list of goods.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01(a).  Proper punctuation in identifications is necessary to delineate explicitly each product or service within a list and to avoid ambiguity.  Commas, semicolons, and apostrophes are the only punctuation that should be used in an identification of goods and/or services.  TMEP §1402.01(a).  An applicant should not use colons, periods, exclamation points, and question marks in an identification.  Id.  In addition, applicants should not use symbols in the identification such as asterisks (*), at symbols (@), or carets.  Id.

 

In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely” (e.g., personal care products, namely, body lotion, bar soap, shampoo).  Id.  Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners).  Id. 

 

Additionally, the identification of goods contains wording that is overly-broad and indefinite and must be amended.  TMEP §1402.03(a); see 37 C.F.R. §2.32(a)(6).  Specifically, “headgear” and “footmuffs” can include wording that belongs in several International Classes aside from Class 25, such as “orthodontic headgear” in Class 10, and “electric footmuffs” in Class 11.  Thus, applicant must clarify the type and nature of the goods and classify them accordingly.  The suggested amendments within Class 25 are emphasized below.

 

The applicant may adopt the following, if accurate:

 

Class 25:         - Headgear: Headgear, namely, bathing caps, berets, cap peaks, caps, hat frames, hats, headgear being headwear for wear, mantillas, miter hats, shower caps, skull caps, top hats, turbans, visors being headwear, wimples . ; Clothing: clothing, namely, aprons, ascots, babies' pants, bandanas, bath robes, bathing trunks, bathing suits, beach clothes in the nature of beach coverups, belts, bibs, not of paper, boas, bodices, brassieres, breeches for wear, camisoles, chasubles, clothing for gymnastics being gymnastics shoes and leotards, clothing, clothing of imitations of leather being jackets and pants, clothing of leather being jackets and pants, coats, collar protector strips for application to clothing collars, collars, combinations, corselets, corsets, cuffs, cyclists' clothing in the nature of cyclists’ jerseys, detachable collars, dress shields, dresses, dressing gowns, ear muffs, fishing vests, footmuffs, fur stoles, furs, gaberdines gabardines, garters, girdles, gloves, headbands, heelpieces for stockings, hoods, hosiery, jackets, jerseys, pinafore dresses, knitwear being sweaters and mittens, layettes, leggings, leg warmers, liveries, maniples, masquerade costumes, mittens, money belts, motorists' clothing being motorcycle jackets and gloves, muffs, neckties, outerclothing being jackets and coats, overalls, overcoats, drawers, paper hats for use as clothing items, paper hats being clothing items, parkas, pelerines, pelisses, petticoats, pocket squares, pockets for clothing, ponchos, pullovers, pajamas, ready-made linings being parts of clothing, ready-made clothing being [specify, e.g., shirts], saris, sarongs, sashes for wear, scarves, shawls, shirt yokes, shirt fronts, shirts, short-sleeve shirts, sports jerseys, ski gloves, skirts, skorts, sleep masks, slips being underclothing, sock suspenders, socks,  [specify, e.g., leg, neck] gaiters, stocking suspenders, stockings, sweat-absorbent stockings, stuff jackets, suits, suspenders, anti-sweat underwear, sweaters, teddies being underclothing, tee-shirts, tights, togas, leg gaiter straps, trousers, underpants, underwear, uniforms, veils, vests, waterproof clothing being rain coats and wet suits, wet suits for water-skiing. Footwear: ; footwear, namely, bath sandals, bath slippers, beach shoes, boot uppers, boots, boots for sports, esparto shoes or sandals, fittings of metal for footwear being heelpieces, football shoes, footwear, footwear uppers, galoshes, gymnastic shoes, half-boots, heelpieces for footwear, heels, inner soles, lace boots, non-slipping devices for footwear being non-slip soles for footwear, sandals, shoes, ski boots, slippers, soles for footwear, sports shoes, studs for football boots, tips for footwear, welts for footwear, wooden shoes

 

Applicant may amend the identification to clarify or limit the goods, but not to broaden or expand the goods beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods may not later be reinserted.  See TMEP §1402.07(e).

 

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 WISH TO HIRE TRADEMARK COUNSEL

 

Because of the legal technicalities and strict deadlines of the trademark application process, applicant is encouraged to hire a private attorney who specializes in trademark matters to assist in this process.  The assigned trademark examining attorney can provide only limited assistance explaining the content of an Office action and the application process.  USPTO staff cannot provide legal advice or statements about an applicant’s legal rights.  TMEP §§705.02, 709.06.  See Hiring a U.S.-licensed trademark attorney for more information. 

 

 

RESPONSE GUIDELINES

 

For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

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.    

 

 

/Caile Reid/

Examining Attorney

Law Office 123

United States Patent & Trademark Office

(571) 270-0764

caile.reid@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 December 28, 2020 for

U.S. Trademark Application Serial No. 90156549

 

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. 

 

 

/Caile Reid/

Examining Attorney

Law Office 123

United States Patent & Trademark Office

(571) 270-0764

caile.reid@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 December 28, 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.”