To: | TKL Products Corp. (TRADEMARKADMIN@LERNERDAVID.COM) |
Subject: | U.S. Trademark Application Serial No. 90386325 - MADERA - TKLPRO.125 |
Sent: | May 12, 2021 02:41:30 PM |
Sent As: | ecom108@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90386325
Mark: MADERA
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Correspondence Address: LERNER, DAVID, LITTENBERG, KRUMHOLZ & ME
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Applicant: TKL Products Corp.
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Reference/Docket No. TKLPRO.125
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: May 12, 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.
SUMMARY OF ISSUES:
SEARCH OF USPTO DATABASE OF MARKS
SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
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)).
Here, applicant’s mark is MADERA for “music stands and stands for musical instruments” in Class 015.
As demonstrated by attached evidence from Collins Dictionary, Madera means “wood” in Spanish. See http://www.collinsdictionary.com/us/dictionary/spanish-english/madera. The foreign equivalent of a merely descriptive English term is also merely descriptive. In re N. Paper Mills, 64 F.2d 998, 998, 17 USPQ 492, 493 (C.C.P.A. 1933); In re Highlights for Children, Inc., 118 USPQ2d 1268, 1270 (TTAB 2016) (quoting In re Optica Int’l, 196 USPQ 775, 777 (TTAB 1977)). Under the doctrine of foreign equivalents, marks with foreign terms from common, modern languages are translated into English to determine descriptiveness. Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1377, 73 USPQ2d 1689, 1696 (Fed. Cir. 2005) (citing In re Sarkli, Ltd., 721 F.2d 353, 354, 220 USPQ 111, 113 (Fed. Cir. 1983); In re Am. Safety Razor Co., 2 USPQ2d 1459, 1460 (TTAB 1987)); see TMEP §1209.03(g).
Applicant’s mark is in Spanish, which is a common, modern language in the United States. Ricardo Media, Inc. v. Inventive Software, LLC, 2019 USPQ2d 311355 (TTAB 2019) (Spanish).
The doctrine is applied when “the ordinary American purchaser” would “stop and translate” the foreign term into its English equivalent. Palm Bay, 396 F.3d at 1377, 73 USPQ2d at 1696 (quoting In re Pan Tex Hotel Corp., 190 USPQ 109, 110 (TTAB 1976)); TMEP §1209.03(g). The ordinary American purchaser includes those proficient in the foreign language. In re Spirits Int’l, N.V., 563 F.3d 1347, 1352, 90 USPQ2d 1489, 1492 (Fed. Cir. 2009); see In re Highlights for Children, Inc., 118 USPQ2d at 1271.
In this case, the ordinary American purchaser would likely stop and translate the mark because the Spanish language is a common, modern language spoken by an appreciable number of consumers in the United States.
Furthermore, additional third party websites show that wood music stands are an identifiable division of the music stand market which people tend to search for. See:
· http://www.misterstandman.com/
· http://www.handcraftedworldinstruments.com/Music_Stands_Sale_Roosebeck_Wood_Music_Stands_s/1926.htm
· http://earlymusicshop.com/collections/music-stands
As the applicant’s submitted specimen shows a music stand made of wood, the mark merely describes an ingredient or main characteristic of the goods to be sold under the mark.
Accordingly, applicant’s mark is refused under Section 2(e)(1) as merely descriptive. See advisory below for more information.
In addition to being merely descriptive, the applied-for mark appears to be generic in connection with the identified goods and/or services. “A generic mark, being the ‘ultimate in descriptiveness,’ cannot acquire distinctiveness” and thus is not entitled to registration on either the Principal or Supplemental Register under any circumstances. In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 1336, 116 USPQ2d 1262, 1264 (Fed. Cir. 2015) (quoting H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 989, 228 USPQ 528, 530 (Fed. Cir. 1986)); see TMEP §§1209.01(c) et seq., 1209.02(a). Therefore, the trademark examining attorney cannot recommend that applicant amend the application to proceed under Trademark Act Section 2(f) or on the Supplemental Register as possible response options to this refusal. See TMEP §1209.01(c).
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.
/Salvatore J Angotti/
Examining Attorney
Law Office 108
571-272-8945
Salvatore.Angotti@uspto.gov
RESPONSE GUIDANCE