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:  April 16, 2021

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) 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 marks that would bar registration under Trademark Act Section 2(d).  15 U.S.C. §1052(d); TMEP §704.02.

 

 

SUMMARY OF ISSUES

 

• Section 2(e)(1) Refusal – Merely Descriptive
• Advisory: Section 2(f) or Supplemental Register
• Insufficient Specimen
• Identification of Goods
• Multiple-Class Application Requirements

 

 

SECTION 2(e)(1) REFUSAL – MERELY DESCRIPTIVE

 

Registration is refused because the applied-for mark merely describes a characteristic or quality of applicant’s goods and/or services.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

 

Applicant has applied to register the mark COOLJADE in standard characters for “Clothing, namely, athletic clothing, sports clothing, tops, bottoms, shirts, t-shirts, tank tops, sweatshirts, hooded sweatshirts, pants, sweatpants, jogging suits, bathing suits, swim suits, dresses, skirts, blouses, shorts, sweaters, jackets, coats, wind resistant jackets, caps, hats, toques, head bands, ear muffs, drawers, underwear, gloves, mittens, belts, motorcyclist protective clothing, cyclist protective clothing, outdoor winter clothing, sun protective clothing, perspiration absorbent clothing, athletic footwear, casual footwear, exercise footwear, sports footwear and wristbands” in International Class 025.

 

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., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (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)). 

 

The determination of whether a mark is merely descriptive is made in relation to an applicant’s goods and/or services, not in the abstract.  DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012); In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); TMEP §1209.01(b).  “Whether consumers could guess what the product [or service] is from consideration of the mark alone is not the test.”  In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).

 

Generally, if the individual components of a mark retain their descriptive meaning in relation to the goods and/or services, the combination results in a composite mark that is itself descriptive and not registrable.  In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1516 (TTAB 2016) (citing In re Tower Tech, Inc., 64 USPQ2d 1314, 1317-18 (TTAB (2002)); TMEP §1209.03(d); see, e.g., Apollo Med. Extrusion Techs., Inc. v. Med. Extrusion Techs., Inc., 123 USPQ2d 1844, 1851 (TTAB 2017) (holding MEDICAL EXTRUSION TECHNOLOGIES merely descriptive of medical extrusion goods produced by employing medical extrusion technologies); In re Cannon Safe, Inc., 116 USPQ2d 1348, 1351 (TTAB 2015) (holding SMART SERIES merely descriptive of metal gun safes); In re King Koil Licensing Co., 79 USPQ2d 1048, 1052 (TTAB 2006) (holding THE BREATHABLE MATTRESS merely descriptive of beds, mattresses, box springs, and pillows). 

 

Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the goods and/or services is the combined mark registrable.  See In re Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968); In re Positec Grp. Ltd., 108 USPQ2d 1161, 1162-63 (TTAB 2013).

 

In this case, both the individual components of the applied-for mark and the composite result are descriptive of applicant’s goods and do not create a unique, incongruous, or nondescriptive meaning in relation to the goods.  Specifically, COOL means “keeping one from becoming too hot”, while JADE means “a hard, typically green stone used for ornaments and implements and consisting of the minerals jadeite or nephrite”.  See attached dictionary evidence.  As the attached evidence from JadeCooling, Duluth Trading, Orvis, and Soft Surroundings shows, others commonly use COOL and JADE together to explain that their clothing products incorporate jade minerals into the composition of their clothing items to give wearers of their goods relief from heat.  Indeed, applicant uses the terms descriptively as well to explain that their jade-infused clothing products keep consumers who wear the goods from becoming too hot, as shown by the specimen of record and the attached evidence from applicant’s own website, which states that “Our CoolJade fabric has been infused with recycled jade to create a natural cooling effect.  The ultra-wicking construction combined with our CoolJade infused yarn decreases your skin surface temperature up to 10℉ – keeping you comfortable, dry, and cool” (emphasis added).

 

Thus, the entirety of applicant’s mark, COOLJADE, merely describes the fact that applicant’s goods are embedded with jade gems to achieve a cooling effect.  As such, COOLJADE is merely descriptive of a characteristic or quality of applicant’s goods, with no other unique, incongruous, or otherwise nondescriptive meaning in relation to the goods.  Therefore, registration of applicant’s mark is refused for mere descriptiveness, pursuant to Section 2(e)(1) of the Trademark Act.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.

 

 

ADVISORY: SECTION 2(f) OR SUPPLEMENTAL REGISTER

 

The applied-for mark has been refused registration on the Principal Register.  Applicant may respond by submitting evidence and arguments against the refusal.  In addition, applicant may respond by doing one of the following:  (1) amending the application to seek registration under Trademark Act Section 2(f), or (2) amending the application to seek registration on the Supplemental Register.  See 15 U.S.C. §§1052(f), 1091.

 

To seek registration on the Principal Register based on a claim of acquired distinctiveness under Section 2(f), applicant generally may (1) submit actual evidence that the mark has acquired distinctiveness of the goods and/or services, (2) claim ownership of an active prior U.S. registration for the same mark for sufficiently similar goods and/or services, or (3) provide the following verified statement of five years’ use:  “The mark has become distinctive of the goods and/or services through the applicant’s substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for at least five years immediately before the date of this statement.”  See 15 U.S.C. §1052(f); 37 C.F.R. §2.41(a); TMEP §§1212.03-.06 et seq.

 

To amend the application to the Supplemental Register, applicant must provide a written statement requesting that the application be amended to the Supplemental Register.  TMEP §816.01; see 15 U.S.C. §1091; 37 C.F.R. §2.47.

 

If applicant responds to the refusal, applicant must also respond to the requirements set forth below.

 

 

INSUFFICIENT SPECIMEN

 

Specimen does not show use in specific class.  Registration is refused because the specimen does not show the applied-for mark as actually used in commerce in connection with any of the goods specified in International Class 025.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); In re Keep A Breast Found., 123 USPQ2d 1869, 1876-79 (TTAB 2017); TMEP §§904, 904.07(a), 1301.04(d), (g)(i).  An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark as actually used in commerce for each international class of goods and/or services identified in the application or amendment to allege use.  15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a); see In re Gulf Coast Nutritionals, Inc., 106 USPQ2d 1243, 1247 (TTAB 2013). 

 

Specifically, the specimen shows the applied-for mark being used in connection with a component (that is, fabric) of the finished products listed in the identification of goods.  However, the specimen does not show applicant’s mark on or in direct connection with the actual specified clothing products.  Because the specimen only shows the applied-for mark identifying a component of the finished clothing products and not the actual goods bearing the mark, the specimen fails to show the mark as actually used in commerce for International Class 025.

 

PLEASE NOTE:  The trademark examining attorney directs applicant’s attention to the “Identification of Goods” section of this Office action below, which further addresses the issue of the applied-for mark identifying a component of applicant’s goods, instead of the actual goods themselves, in the specimen of record.  If the suggested component-related amendments to the identification of goods are accurate and applicant amends the identification of goods accordingly, the refusal in this “Insufficient Specimen” section will become moot.  In that case, examination of this application would be allowed to proceed with the current specimen. 

 

Examples of specimens.  Specimens for goods include a photograph of (1) the actual goods bearing the mark; (2) an actual container, packaging, tag or label for the goods bearing the mark; or (3) a point-of-sale display showing the mark directly associated with the goods.  See 37 C.F.R. §2.56(b)(1), (c); TMEP §904.03(a)-(m).  A webpage specimen submitted as a display associated with the goods must show the mark in association with a picture or textual description of the goods and include information necessary for ordering the goods.  TMEP §904.03(i); see 37 C.F.R. §2.56(b)(1), (c). 

 

Any webpage printout or screenshot submitted as a specimen must include the webpage’s URL and the date it was accessed or printed on the specimen itself, within the TEAS form that submits the specimen, or in a verified statement under 37 C.F.R. §2.20 or 28 U.S.C. §1746 in a later-filed response.  See 37 C.F.R. §2.56(c); TMEP §§904.03(i), 1301.04(a).

 

Response options.  Applicant may respond to this refusal by satisfying one of the following for each applicable international class:

 

(1)        Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the goods and/or services identified in the application or amendment to allege use.  A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20:  “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.”  The substitute specimen cannot be accepted without this statement.

 

(2)        Amend the filing basis to intent to use under Section 1(b) (which includes withdrawing an amendment to allege use, if one was filed), as no specimen is required before publication.  This option will later necessitate additional fee(s) and filing requirements, including a specimen.

 

For an overview of the response options referenced above and instructions on how to satisfy these options using the online Trademark Electronic Application System (TEAS) form, see the Specimen webpage. 

 

 

IDENTIFICATION OF GOODS

 

The identification of goods specifies finished products; however, the record indicates that the mark identifies a component or ingredient of the finished products rather than the finished products themselves.  See TMEP §1402.05(a).  Specifically, the specimen shows that applicant’s “CoolJade fabric” or “CoolJade infused yarn” is a component of the finished products.  The application must accurately identify the specific goods with which applicant is using or intends to use the mark; thus, applicant must clarify the goods because of this inconsistency in the record.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.05(a). 

 

Thus, applicant must amend the identification to “(1) precisely set forth the common name of the component or ingredient, (2) indicate that the component or ingredient is sold as a component or ingredient of another finished product, and (3) set forth the common name of the finished product of which the identified component or ingredient forms a part.”  TMEP §1402.05(a).  The proper international class for such component or ingredient is the international class of the finished product.  Id.  For example, the wording “Clothing, namely . . .” may be amended to “jade-infused fabric sold as a component of clothing, namely, . . .”.

 

Further, the wording “athletic clothing” in the identification of goods is indefinite and must be clarified to specify what applicant’s “athletic clothing” is, such as “jade-infused fabric sold as a component of athletic clothing, namely, t-shirts, tank tops”.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Also, the wording “sports clothing” is indefinite and must be clarified to specify what the “sports clothing” is, such as “jade-infused fabric sold as a component of sports clothing, namely, t-shirts, tank tops”. 

 

In addition, the wording “caps” is indefinite and must be clarified to specify that the “caps” are headwear, such as “caps being headwear”.

 

Moreover, the wording “motorcyclist protective clothing” in the identification of goods for International Class 025 must be clarified because it is too broad and could include goods in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass “jade-infused fabric sold as a component of articles of protective clothing for wear by motorcyclists for protection against accident or injury” in International Class 009 and “motorcyclist protective clothing, namely, motorcycle jackets” in International Class 025.

 

Similarly, the wording “cyclist protective clothing” in International Class 025 must be clarified because it is too broad and could include goods in other international classes.  In particular, this wording could encompass “jade-infused fabric sold as a component of articles of protective clothing for wear by cyclists for protection against accident or injury” in International Class 009 and “cyclist protective clothing, namely, cyclists’ jerseys” in International Class 025.

 

Additionally, the wording “outdoor winter clothing” is indefinite and must be clarified to specify what the “outdoor winter clothing” is, such as “outdoor winter clothing, namely, parkas”.

 

As well, the wording “sun protective clothing” is indefinite and must be clarified to specify what the “sun protective clothing” is, such as “sun protective clothing, namely, shirts”.

 

Finally, the wording “perspiration absorbent clothing” is indefinite and must be clarified to specify the nature of the “perspiration absorbent clothing”, such as “perspiration absorbent underwear clothing”. 

 

Applicant may substitute the following wording, if accurate (additions highlighted in bold and underlined and deletions indicated by strikethrough and italics);

 

International Class 009: Jade-infused fabric sold as a component of articles of protective clothing for wear by motorcyclists for protection against accident or injury; jade-infused fabric sold as a component of articles of protective clothing for wear by cyclists for protection against accident or injury

 

International Class 025: Jade-infused fabric sold as a component of clothing, Clothing, namely, athletic clothing, sports clothing, tops, bottoms, shirts, t-shirts, tank tops, sweatshirts, hooded sweatshirts, pants, sweatpants, jogging suits, bathing suits, swim suits, dresses, skirts, blouses, shorts, sweaters, jackets, coats, wind resistant jackets, caps, caps being headwear, hats, toques, head bands, ear muffs, drawers, underwear, gloves, mittens, belts, motorcyclist protective clothing, namely, motorcycle jackets, cyclist protective clothing, namely, cyclists’ jerseys, outdoor winter clothing, namely, parkas, sun protective clothing, namely, shirts, perspiration absorbent underwear clothing, athletic footwear, casual footwear, exercise footwear, sports footwear and wristbands wristbands; jade-infused fabric sold as a component of athletic clothing, namely, t-shirts, tank tops, jogging suits, bathing suits, swim suits, athletic footwear, exercise footwear, sports footwear and wristbands; jade-infused fabric sold as a component of sports clothing, namely, t-shirts, tank tops, jogging suits, bathing suits, swim suits, athletic footwear, exercise footwear, sports footwear and wristbands

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  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.

 

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

The application references goods and/or services based on use in commerce in more than one international class; therefore, applicant must satisfy all the requirements below for each international class:

 

(1)        List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).

 

(2)        Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).  Specifically, the application identifies goods and/or services based on use in commerce that are classified in at least two classes; however, applicant submitted a fee(s) sufficient for only one class.  Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.

 

(3)        Submit verified dates of first use of the mark anywhere and in commerce for each international class.  See more information about verified dates of use.

 

(4)        Submit a specimen for each international class.  The current specimen is not acceptable for any international class.  See more information about specimens.

 

Examples of specimens.  Specimens for goods include a photograph of (1) the actual goods bearing the mark; (2) an actual container, packaging, tag or label for the goods bearing the mark; or (3) a point-of-sale display showing the mark directly associated with the goods.  See 37 C.F.R. §2.56(b)(1), (c); TMEP §904.03(a)-(m).  A webpage specimen submitted as a display associated with the goods must show the mark in association with a picture or textual description of the goods and include information necessary for ordering the goods.  TMEP §904.03(i); see 37 C.F.R. §2.56(b)(1), (c). 

 

Any webpage printout or screenshot submitted as a specimen must include the webpage’s URL and the date it was accessed or printed on the specimen itself, within the TEAS form that submits the specimen, or in a verified statement under 37 C.F.R. §2.20 or 28 U.S.C. §1746 in a later-filed response.  See 37 C.F.R. §2.56(c); TMEP §§904.03(i), 1301.04(a).

 

(5)        Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.”  See more information about verification.

 

See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).

 

For an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.

 

 

ASSISTANCE

 

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.    

 

 

/Romeo R. del Rosario/

Romeo R. del Rosario

Trademark Examining Attorney

Law Office 115, USPTO

571-272-6556

romeo.delrosario@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 16, 2021 for

U.S. Trademark Application Serial No. 90326953

 

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. 

 

 

/Romeo R. del Rosario/

Romeo R. del Rosario

Trademark Examining Attorney

Law Office 115, USPTO

571-272-6556

romeo.delrosario@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 16, 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.”