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:  October 25, 2021

 

 

 

The Office has reassigned this application to the undersigned trademark examining attorney.

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on October 18, 2021.

 

In a previous Office action dated April 16 2021, the trademark examining attorney refused registration of the applied-for mark based on the following:  Trademark Act Section 2(e)(1) because the applied-for mark is merely descriptive in relation to applicant’s goods, failure to show the applied-for mark in use in commerce with any of the specified goods.  In addition, applicant was required to satisfy the following requirements:  amend the identification of goods, and comply with applicable multiple-class application requirements. 

 

Based on applicant’s response, the trademark examining attorney notes that the following requirement has been satisfied: definite amended identification provided.  See TMEP §§713.02, 714.04. 

 

The following refusal has also been obviated:  specimen requirement.  See TMEP §§713.02, 714.04. 

 

In addition, the following requirement has been withdrawn:  the multiple-class application requirements are no longer applicable.  See TMEP §§713.02, 714.04. 

 

Further, 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:

• Refusal – Section 2(e)(1) Merely Descriptive

 

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

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

 

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).

 

Applicant has applied to register the mark COOLJADE for “Jade-infused fabric sold as a component of clothing, namely, 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 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; 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” in International Class 025.

 

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., In re Petroglyph Games, Inc., 91 USPQ2d 1332, 1341 (TTAB 2009) (holding BATTLECAM merely descriptive of computer game software with a feature that involve battles and provides the player with the option to utilize various views of the battlefield); In re Cox Enters., 82 USPQ2d 1040, 1043 (TTAB 2007) (holding THEATL merely descriptive of publications featuring news and information about Atlanta where THEATL was the equivalent of the nickname THE ATL for the city of Atlanta); In re Tower Tech, Inc., 64 USPQ2d 1314, 1317-18 (TTAB 2002) (holding SMARTTOWER merely descriptive of highly automated cooling towers); In re Sun Microsystems, Inc., 59 USPQ2d 1084, 1085 (TTAB 2001) (holding AGENTBEANS merely descriptive of computer software for use in developing and deploying application programs on a global computer network).

 

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 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, the previously attached Internet evidence shows that 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 the previously attached dictionary evidence. 

 

Furthermore, the newly and previously attached Internet evidence from the following brands and websites: “ExOfficio”, “Eysan Fabrics”, “With Honour”, “1822 Denim”, “Lee”, “JadeCooling”, “Duluth Trading”, “Orvis”, and “Soft Surroundings”, shows others in applicant’s industry 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.

 

Moreover, 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”.

 

Applicant argues that the applied-for mark is not merely descriptive of a feature or characteristic of applicant’s goods because applicant’s “clothing items are not a hard, typically green stone.”  Also, “[a]pplicant submits that COOLJADE, taken by itself, is simply not descriptive of clothing, whether jade infused or not.”  Furthermore, applicant argues that the term COOL has various meanings.  Applicant’s argument are not persuasive because descriptiveness is considered in relation to the relevant goods.  DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012).  “That a term may have other meanings in different contexts is not controlling.” Robinson v. Hot Grabba Leaf, LLC, 2019 USPQ2d 149089, at *5 (TTAB 2019) (citing In re Canine Caviar Pet Foods, Inc., 126 USPQ2d 1590, 1598 (TTAB 2018)); TMEP §1209.03(e).  “It is well settled that so long as any one of the meanings of a term is descriptive, the term may be considered to be merely descriptive.”  In re Mueller Sports Med., Inc., 126 USPQ2d 1584, 1590 (TTAB 2018) (quoting In re Chopper Indus., 222 USPQ 258, 259 (TTAB 1984)).  In the present case, the evidence of record establishes that jade infused fabric creates a cooling effect when the clothing item is worn.  Because the terms JADE and COOL are commonly used in the marketplace to describe clothing items that are infused with jade for a cooling effect, consumers are likely to immediately view the applied-for mark to merely convey information about clothing items, that is, clothing products incorporating jade minerals into the composition of their clothing items to give wearers of their goods relief from heat or to keep them cool.

 

Therefore, the refusal pursuant to Section 2(e)(1) of the Trademark Act is now made final. 

 

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.

 

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 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).

 

 

/Sahar Nasserghodsi/

Sahar Nasserghodsi

Examining Attorney

Law Office 115

(571)272-9192

Sahar.Nasserghodsi@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 October 25, 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. 

 

 

/Sahar Nasserghodsi/

Sahar Nasserghodsi

Examining Attorney

Law Office 115

(571)272-9192

Sahar.Nasserghodsi@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 October 25, 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.”