Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

Issue date:  April 07, 2021

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on 2/2/2021.

 

In a previous Office action dated 1/29/2021, the trademark examining attorney refused applicant’s request to amend the mark in the application. 

 

The trademark examining attorney maintains and now makes FINAL the refusal in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

 

• Drawing Amendment Not Accepted – Material Alteration

 

DRAWING AMENDMENT NOT ACCEPTED – MATERIAL ALTERATION

 

The denial of the request to amend the drawing is now made FINAL for the reasons set forth below.  37 C.F.R. §2.72(a)(2), (b)(2); TMEP §807.14; 37 C.F.R. §2.63(b).

 

Applicant has requested to amend the mark in the application.  The USPTO cannot accept the proposed changes because they would materially alter the mark in the drawing filed with the original application or as previously amended.  37 C.F.R. §2.72(a)(2), (b)(2); TMEP §807.14.  Accordingly, the proposed amendment will not be entered; the previous drawing of the mark will remain operative.  See TMEP §807.17. 

 

The original drawing shows the mark as the wording “SP5DER” in spray-paint-like stylized font.  The proposed amended drawing shows the mark as the wording “SP5DER” in a different spray-paint-like stylized font, with two dots or circles above the “5”. 

 

The USPTO cannot accept an amendment to a mark if it will materially alter the mark in the drawing filed with the original application, or in a previously accepted amended drawing.  37 C.F.R. §2.72(a)(2), (b)(2); TMEP §807.14.  An amendment to the mark is material when the USPTO would need to republish the mark with the change in the USPTO Trademark Official Gazette to fairly present the mark to the public.  In re Thrifty, Inc., 274 F.3d 1349, 1352, 61 USPQ2d 1121, 1123-24 (Fed. Cir. 2001) (citing In re Hacot-Columbier, 105 F.3d 616, 620, 41 USPQ2d 1523, 1526 (Fed. Cir. 1997)); TMEP §807.14. 

 

That is, an amendment is material if the altered mark does not retain “the essence of the original mark” or if the new and old forms do not “create the impression of being essentially the same mark.”  In re Hacot-Columbier, 105 F.3d at 620, 41 USPQ2d at 1526 (quoting Visa Int’l Serv. Ass’n v. Life-Code Sys., Inc., 220 USPQ 740, 743-44 (TTAB 1983)); see, e.g., In re Who? Vision Sys., Inc., 57 USPQ2d 1211, 1218 (TTAB 2000) (amendment from “TACILESENSE” to “TACTILESENSE” a material alteration); In re CTB Inc., 52 USPQ2d 1471, 1475 (TTAB 1999) (amendment of TURBO with a design to just the typed word TURBO without design a material alteration). 

 

When determining materiality, the addition of any element that would require a further search of the USPTO database for conflicting marks is also relevant.  In re Guitar Straps Online LLC, 103 USPQ2d 1745, 1747 (TTAB 2012) (citing In re Pierce Foods Corp., 230 USPQ 307, 308-09 (TTAB 1986)); In re Who? Vision Sys. Inc., 57 USPQ2d at 1218-19; TMEP §807.14.

 

In the present case, applicant’s proposed amendment would materially alter the mark in the drawing filed with the original application or as previously amended because the amendment adds new elements, namely, the two dots above the number “5”, which alters the commercial impression of the mark. Specifically, the additional dots above the number “5” creates the impression of eyes on a spider that is not present in the initial drawing. See attached evidence from The Conversation (evincing that while spiders generally have eight eyes, they often have two large eyes in the front with the additional eyes being on the side) and from InifinteSpider.com (explaining that the “antero-median eyes” or “AME” are often the largest eyes in the middle of a spider’s head, and they are “the one[s] most people think of when they see a spider.”); see also, attached evidence from applicant’s initial application at 6 and applicant’s Response to Office Action dated 2/2/2021 (hereinafter, “Response”) at 5. Therefore, applicant’s proposed amendment is refused because the amendment materially alter the mark in the drawing filed with the original application.

 

APPLICANT’S RESPONSE

 

Applicant argues that the addition of two elements to the drawing does not constitute a material alteration because “it merely adds an accentuation to the number “5” and it is not intended to give the appearance of spider eyes or pincers.” Response at 6. 

 

In support of its position applicant cites Jack Wolfskin Ausrustung Fur Draussen GMBH & co. KGAA v. New Millenium Sports, S.L.U. to claim that the courts have held minor adjustments in the font and alterations to the design element of a registered mark is insufficient to change the commercial impression. 797 F.3d 1363, 1370 (Fed. Cir. 2915). However, this case is clearly distinguishable from the Jack Wolfskin case, in that there is not only the minor adjustments to the font, but the addition of two new elements in the mark, requiring additional searching of these elements. Additionally, the controlling question in this particular case is whether the amendments “create essentially the same commercial impression.” TMEP §807.14 (citing Jack Wolfskin, 797 F.3d at 1370). These elements added above the number “5” do not create “essentially the same commercial impression,” but rather they generate a new and distinguishable commercial impression because they change the mental reaction or psychological impact of the mark in that they suggest an appearance of eyes or pincers.  As such, applicant’s argument that the amendment only contains minor adjustments and alterations is unpersuasive.

 

Applicant also asserts that the Examining Attorney’s “alleged connection is unlikely given that spiders typically have eight (8) eyes, not just two.” Response at 8. However, the attached evidence demonstrates that while spiders generally have eight eyes, they often have “two very large front eyes to get a clear, colour image and judge distance,” and that some spiders have developed larger front eyes “to see a wide area and accurately throw down its spider web to catch its prey.” See above-referenced evidence from The Conversation (evincing that while spiders generally have eight eyes, they often have two large eyes in the front with the additional eyes being on the side) and from InfiniteSpider.com (evincing that there are many different layouts of spider’s eyes, and that several include two large, centered eyes in the front). This demonstrates that while spiders may typically have eight eyes, there are generally two, larger central eyes that “most people think of when they see a spider,” and that applicant’s amended drawing creates a similar appearance and commercial impression of those particular eyes. See above-referenced evidence from InifinteSpider.com; see also, e.g., attached evidence from Owlocation.com (evincing that that net-casting spiders “have two huge rear eyes that are very efficient when it comes to seeing in a low light,” and showing a spider that has eyes similar to applicant’s amended drawing) and from Dreamstime (demonstrating several front view images of spiders where there are two large front eyes, evincing that applicant’s amended drawing adding two dots above the number “5” creates the commercial impression of spider eyes). Moreover, there are over 34,000 species of spiders, some of which only have two eyes as seen in applicant’s amended drawing. See attached evidence from UCSB ScienceLine (evincing that there are over 34,000 species of spiders, some of which only have two eyes), AcademicKids.com (evincing “the caponiid spiders (family Caponiidae) include several genera of two eyed spiders, such as the North American genus Orthonops,”), and Wikipedia (explaining that the “Caponiidae” spider family that can vary in the number of eyes depending on species, including some which only have two eyes). Thus, applicant’s argument is unpersuasive.

 

Applicant also argues that the additional the two elements merely form an umlaut, that the number “5” is meant to replace the letter “I”, and that this intentionally misspelling and/or mischaracterization is meant to keep the same commercial impression. Response at 8. However, a diacritical mark is a symbol that tells a reader how to pronounce a letter in regards to accent, tone, or stress – in the case of an umlaut that letter is a vowel. See attached evidence from Vocabulary.com; see also, attached evidence from Merriam-Webster (explaining that umlauts are used over vowels in German and Germanic languages, such as Swedish). Applicant has provided no evidence that diacritical marks are used to accentuate numbers or that consumers would perceive the design elements added to the drawing as merely being an umlaut above a number rather than as design elements creating the stylized eyes of a spider. As such, applicant’s argument is unpersuasive.

 

Therefore, applicant’s arguments that the amended drawing does not constitute a material alteration is unpersuasive because the amended mark does not create essentially the same commercial impression.

 

To avoid the application from abandoning, applicant must respond to this issue.  TMEP §807.17.  Applicant may respond by (1) withdrawing the request to amend the drawing, or (2) arguing that the proposed amendment is not a material alteration of the mark.

 

For more information about changes to the mark in the drawing after the application filing date, please go to the Drawing webpage.

 

How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

 

/Tyler M. Seling/

Tyler M. Seling, Esq.

Examining Attorney

Law Office 112

(571) 272-0272

Tyler.Seling@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 April 07, 2021 for

U.S. Trademark Application Serial No. 90183199

 

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. 

 

 

Tyler Seling

/Tyler M. Seling/

Tyler M. Seling, Esq.

Examining Attorney

Law Office 112

(571) 272-0272

Tyler.Seling@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 April 07, 2021, 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.”