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:  July 27, 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
• Applicant’s Domicile Address Requirement
• Disclaimer Requirement

 

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

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

 

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)). 

 

Applicant has applied to register the mark “SPA MUSIC” in standard characters for use in connection with “Providing online non-downloadable visual and audio recordings featuring background noise, white noise, music, and sound masking” in International Class 41.

 

The word “SPA” in the mark merely indicates the type of audio the applicant provides. The attached evidence shows that “SPA MUSIC” is a particular category of audio recordings—that is, music or sounds typically found in spas. From the context of the attached websites, such music or sounds are for the purpose of relaxation and are intended to have a calming effect. Finally, “MUSIC” identifies applicant’s applied-for services of providing online non-downloadable visual and audio recordings featuring “MUSIC” among other recordings in International Class 41.

 

Consumers are likely to recognize from the mark itself that applicant’s recordings feature music and sounds that spas play.

 

Therefore, applicant’s mark merely describes applicant’s services and registration is refused pursuant to Section 2(e)(1) of the Trademark Act.

 

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

 

GENERIC ADVISORY

 

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).

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

APPLICANT’S DOMICILE ADDRESS REQUIREMENT

 

Applicant must clarify its domicile street address because the domicile address of record identifies a post office box or mail forwarding service and does not appear to be applicant’s permanent legal place of residence or principal place of business.  See 37 C.F.R. §§2.11(b), 2.189; TMEP §601.01(b)(1).  A domicile address must identify either (1) the permanent legal place of residence, which is the place an individual applicant resides and intends to be the applicant’s principal home; or (2) the principal place of business, which is the juristic applicant’s headquarters where its senior executives or officers ordinarily direct and control the entity’s activities.  See37 C.F.R. §2.2(o)-(p); TMEP §803.05(a).  All applications must include the applicant’s domicile address, which is required for a complete application.  See 37 C.F.R. §§2.22(a)(1), 2.32(a)(2), 2.189. 

 

In this case, the application record lists applicant as a juristic entity and specifies applicant’s domicile as a post office box or mail forwarding service instead of a street address.  In most cases, a post office box or mail forwarding service is not acceptable as a domicile address because it does not identify the location of applicant’s headquarters where the entity’s senior executives or officers ordinarily direct and control the entity’s activities.  See37 C.F.R. §2.2(o)-(p); TMEP §601.01(b)(1). 

 

Response options.  Applicant must provide its domicile street address.  See 37 C.F.R. §2.32(a)(2), 2.189; TMEP §803.05.  Alternatively, applicant may provide documentation showing that the listed address is, in fact, applicant’s domicile.  See37 C.F.R. §2.11(b); TMEP §601.01(b)-(b)(1).

 

To provide applicant’s domicile street address.  After opening the correct Trademark Electronic Application System (TEAS) response form and entering the serial number, (1) answer “yes” to wizard question #5 and click “Continue;” (2) on the “Owner Information” page, in the “Domicile Address” field, uncheck the box stating the domicile and mailing address are not the same; and (3) below the checkbox provide applicant’s domicile street address.  Applicant’s domicile street address will be hidden from public view if it is entered into the “Domicile Address” field.  However, any street address listed in the “Mailing Address” field will be publicly viewable.

 

To provide documentation to support applicant’s domicile address.  Applicant should provide the most recent documentation showing that the address is the applicant’s business headquarters, for example one of the following: (1) the most recent final annual or quarterly report or other similar report; or (2) a current certificate of good standing for the corporation or other business entity issued by a federal or state government agency.  TMEP §601.01(b)-(b)(1); see 37 C.F.R. §2.11(b).  Submitted documentation must show the name, listed domicile address, and the date of the document but should redact other personal and financial information.

 

To provide this documentation, open the correct TEAS response form and enter the serial number, answer “yes” to wizard question #3, and on the “Additional Statement(s)” page, below the “Miscellaneous Statement” field, click the button below the text box to attach documentation to support the street address.

 

DISCLAIMER REQUIREMENT

 

The application includes a disclaimer of the following matter in the applied-for mark:  “WHITE NOISE.”  An applicant may voluntarily disclaim matter in a mark regardless of whether the matter is registrable.  TMEP §1213.01(c); see 15 U.S.C. §1056(a).  However, a disclaimer of this matter is not required and not appropriate as the applied-for mark does not include the terms “WHITE NOISE.” An applicant may voluntarily disclaim a component of a mark sought to be registered. TMEP §1213.01(c). Here, however, the wording “WHITE NOISE” is not a component of applicant’s mark.

 

Therefore, applicant may request to withdraw this disclaimer from the application.

 

For an overview of disclaimers and instructions on how to provide one using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.

 

CONTACTING THE EXAMINING ATTORNEY

 

Response guidelines.  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.    

 

 

/Jessica Chong/

Jessica Chong

Examining Attorney

Law Office 102

(571) 270-7880

jessica.chong@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 July 27, 2021 for

U.S. Trademark Application Serial No. 90442260

 

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. 

 

 

/Jessica Chong/

Jessica Chong

Examining Attorney

Law Office 102

(571) 270-7880

jessica.chong@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 July 27, 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.”