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. 

 

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.

 

Issue date:  June 08, 2021

 

SUMMARY OF ISSUES

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

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

Registration is refused because the applied-for mark merely describes a feature 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 seeks to register the applied-for mark NATIONAL BASKETBALL RETIRED PLAYERS ASSOCIATION in standard characters for use in connection with “Association services, namely, promoting the interests of retired basketball players” in International Class 35.

 

The term ASSOCIATION appears in applicant’s identification of services. An association is “an organization of persons having a common interest.”  Also present are the terms, “national,” “retired,” “basketball,” and “player.” NATIONAL means “of or relating to a nation.” The term RETIRED refers to an individual who has “concluded one's working or professional career.” BASKETBALL is “a usually indoor court game between two teams of usually five players each who score by tossing an inflated ball through a raised goal.” A PLAYER is “a person who plays a game.” See attached entries from www.merriam-webster.com.  Together, as applied to the identified services, the terms immediately convey the idea of an association, or group, of basketball players from across the nation who have retired.

The attached excerpts from applicant’s website, http://www.legendsofbasketball.com, show that applicant’s services focus primarily on connecting and helping retired basketball players. Therefore, the term NATIONAL BASKETBALL RETIRED PLAYERS merely describes the consumers of the services.  Moreover, the excerpts establish that applicant is a group and so is an ASSOCIATION.

Terms that describe the provider of a product or service may also be merely descriptive of the product and/or service.  See In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1301, 102 USPQ2d 1217, 1220 (Fed. Cir. 2012) (affirming Board’s finding that NATIONAL CHAMBER was merely descriptive of online service providing directory information for local and state chambers of commerce and business and regulatory data analysis services to promote the interest of businessmen and businesswomen); In re Major League Umpires, 60 USPQ2d 1059, 1060 (TTAB 2001) (holding MAJOR LEAGUE UMPIRE merely descriptive of clothing, face masks, chest protectors and shin guards); TMEP §1209.03(q). 

Generally, if the individual components of a mark retain their descriptive meaning in relation to the 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 Franklin Cnty. Historical Soc’y, 104 USPQ2d 1085, 1086 (TTAB 2012) (holding CENTER OF SCIENCE AND INDUSTRY merely descriptive of operating a museum and conducting workshops, programs, and demonstrations in the field of science); In re Putman Publ’g Co., 39 USPQ2d 2021, 2021-22 (TTAB 1996) (holding FOOD& BEVERAGE ON-LINE merely descriptive of news and information service for the food processing industry); In re Copytele, Inc., 31 USPQ2d 1540, 1541-42 (TTAB 1994) (holding SCREEN FAX PHONE merely descriptive of facsimile terminals employing electrophoretic displays).  

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 components and the composite result are descriptive of applicant’s services and do not create a unique, incongruous, or nondescriptive meaning in relation to the services.  Specifically, as applied to the identified services, the compound term NATIONAL BASKETBALL RETIRED PLAYERS ASSOCIATION immediately conveys that the services are targeted towards RETIRED BASKETBALL PLAYERS within the NATION and that applicant is an ASSOCIATION.  No unique, incongruous or nondescriptive meaning is created by combining the terms.

 

Information from the applicant’s website confirms that it is comprised of retired basketball players and it, “serves former professional basketball players, supporting them in life after their playing days, and helping them to leverage their inspirational influence to promote and teach basketball in their communities.” As such, because the organization is made up of and working for retired basketball players, its name is descriptive of its purpose. Similar associations exist for retired players of other sports. See attached information from: http://nhlalumni.org/about/ and

http://www.nflretiredplayersassociation.org/about.html.

 

Therefore, applicant’s mark NATIONAL BASKETBALL RETIRED PLAYERS ASSOCIATION merely describes a feature and the provider of 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.

 

Because of the legal technicalities and strict deadlines of the trademark application process, applicant is encouraged to hire a private attorney who specializes in trademark matters to assist in this process.  The assigned trademark examining attorney can provide only limited assistance explaining the content of an Office action and the application process.  USPTO staff cannot provide legal advice or statements about an applicant’s legal rights.  TMEP §§705.02, 709.06.  See Hiring a U.S.-licensed trademark attorney for more information. 

 

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.    

 

/Kathryn Browning/

Examining Attorney

Law Office 124

571-272-4466

kathryn.browning@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 June 08, 2021 for

U.S. Trademark Application Serial No. 90445721

 

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. 

 

 

/Kathryn Browning/

/Kathryn Browning/

Examining Attorney

Law Office 124

571-272-4466

kathryn.browning@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 June 08, 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.”