To: | Ultra Pro International, LLC (trademark@keenerlegal.com) |
Subject: | U.S. Trademark Application Serial No. 90539639 - TOPLOADER - N/A |
Sent: | October 01, 2021 08:39:22 AM |
Sent As: | ecom126@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90539639
Mark: TOPLOADER
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Correspondence Address: |
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Applicant: Ultra Pro International, LLC
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Reference/Docket No. N/A
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: October 01, 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
SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
Applicant has applied to register the wording “TOPLOADER” as its trademark for “Plastic holders for gaming cards; Plastic holders for trading cards.” “TOPLOADER” refers to “a machine or appliance, as a washing machine, loaded and unloaded through an opening in the top.” See attached dictionary evidence. Furthermore, the attached evidence demonstrates that this term is used with some frequency in the industry to describe card holders with the same characteristics as applicant’s goods. Thus, the proposed mark is merely descriptive of applicant’s goods, because it immediately conveys that applicant’s card holders are used by placing cards into the holder via an opening at the top, as opposed to an opening on the front.
Ultimately, when purchasers encounter applicant’s goods using the mark “TOPLOADER”, they will immediately understand the mark as indicating a characteristic or function of the goods that they are card holders are used by placing cards into the holder via an opening at the top, as opposed to an opening on the front, and not an indication that applicant is the source of the goods/services. Therefore, the mark is merely descriptive and registration is refused pursuant to Section 2(e)(1) of the Trademark Act.
AMENDMENT TO SUPPLEMENTAL REGISTER OR §2(F) – ADVISORY
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.
However, in this case, the USPTO will not accept a verified statement of five years’ use alone to establish distinctiveness because applicant’s mark is highly descriptive of applicant’s goods and/or services. See In re Kalmbach Publ’g Co., 14 USPQ2d 1490, 1491-92 (TTAB 1989); TMEP §1212.05(a). An applicant’s evidentiary burden of showing acquired distinctiveness increases with the level of descriptiveness of the mark sought to be registered; a more descriptive term requires more evidence. Royal Crown Co. v. Coca-Cola Co., 892 F.3d 1358, 1365, 127 USPQ2d 1041, 1045 (Fed. Cir. 2018) (citing In re Steelbuilding.com, 415 F.3d 1293, 1300, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005)).
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.
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.
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.
/Leah N. Barrett/
Leah N. Barrett
Trademark Examining Attorney
Law Office 126, USPTO
571-272-6416
leah.barrett@uspto.gov
RESPONSE GUIDANCE