To: | The Topps Company, Inc. (trademarks.us@dentons.com) |
Subject: | U.S. Trademark Application Serial No. 90307335 - TOPPS - N/A |
Sent: | March 17, 2021 02:10:06 PM |
Sent As: | ecom105@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90307335
Mark: TOPPS
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Correspondence Address:
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Applicant: The Topps Company, Inc.
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Reference/Docket No. N/A
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 17, 2021
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.
The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d). 15 U.S.C. §1052(d); TMEP §704.02.
MERELY DESCRIPTIVE REFUSAL:
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., DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (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)).
Applicant’s mark is TOPPS (stylized) for “Clothing, including, pants, skirts, dresses, shirts, t-shirts, shorts, blouses, sweaters, sweat jackets, sweat pants, sweat suits, sweat shorts, sweat shirts, swim wear, socks, gloves, scarves, under garments and outer jackets; headwear, footwear; belts”.
Here, “topps” is the phonetically equivalent to the word “tops”.
“Top” means “A garment worn on the upper half of the body.” See attachments from <http://www.ahdictionary.com/word/search.html?q=top>.
Another definition is “a piece of clothing that covers the upper part of your body”. See attachments from <http://www.macmillandictionary.com/dictionary/american/top_1>.
TOPPS which is phonetically equivalent to the word TOPS immediately conveys to consumers that applicant sells garments and pieces of clothing that covers the upper half and part of the body. For example, applicant’s ID includes the word “shirts”. A “shirt” is a top because it is defined as “a garment for the upper part of the body”. See attachments from <http://www.ahdictionary.com/word/search.html?q=shirt>.
The applied-for mark shows the wording in stylized lettering. Stylized descriptive or generic wording is registrable only if the stylization creates a commercial impression separate and apart from the impression made by the wording itself. See In re Cordua Rests., Inc., 823 F.3d 594, 606, 118 USPQ2d 1632, 1639-40 (Fed. Cir. 2016); In re Northland Aluminum Prods., Inc., 777 F.2d 1556, 1561, 227 USPQ 961, 964 (Fed. Cir. 1985); TMEP §1209.03(w). Common and ordinary lettering with minimal stylization, as in this case, is generally not sufficiently striking, unique, or distinctive as to make an impression on purchasers separate from the wording. See In re Sadoru Grp., Ltd., 105 USPQ2d 1484, 1487 (TTAB 2012). Here, the stylization is insufficient. The stylized letters merely reinforce the word TOPPS. No new and additional design elements and literal elements are created from the stylization.
For the reasons stated above, the proposed mark is at minimum highly descriptive of the goods identified in the application. As such, the merely descriptive mark is refused registration under Section 2(e)(1) of the Trademark Act.
RESPONSE:
IDENTIFICATION OF GOODS:
Class 25 -
In Class 25, applicant’s identification is: “Clothing, including, pants, skirts, dresses, shirts, t-shirts, shorts, blouses, sweaters, sweat jackets, sweat pants, sweat suits, sweat shorts, sweat shirts, swim wear, socks, gloves, scarves, under garments and outer jackets; headwear, footwear; belts.”
The following wording is unacceptable:
Taking the above together, applicant may adopt the following:
Class 18: Pet clothing
Class 25: Clothing, namely, pants, skirts, dresses, shirts, t-shirts, shorts, blouses, sweaters, sweat jackets, sweat pants, sweat suits, sweat shorts, sweat shirts, swim wear, socks, gloves, scarves, under garments and outer jackets; headwear, footwear; belts
See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
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.
MULTI-CLASS REQUIREMENTS:
The application identifies goods in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):
(1) List the goods by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp). The application identifies goods that are classified in at least 2 classes; however, applicant submitted a fee sufficient for only 1 class. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/multiclass.jsp.
FEES FOR ADDITIONAL CLASSES:
The fee for adding classes to a TEAS Standard application is $350 per class. See 37 C.F.R. §2.6(a)(1)(iii). For more information about adding classes to an application, see the Multiple-class Application webpage.
If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.
How to respond. Click to file a response to this nonfinal Office action.
/Simon Teng/
Simon Teng
Trademark Examining Attorney
Law Office 105
(571) 272-4930
simon.teng@uspto.gov
RESPONSE GUIDANCE