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:  September 19, 2021

 

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

Search results: No conflicting 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:

 

• Refusal: Section 2(e)(1) - Merely descriptive
• Advisory: Claiming Section 2(f) acquired distinctiveness

 

Refusal: Section 2(e)(1) - Merely descriptive

Registration is refused because the applied-for mark merely describes an intended user 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 that describes an intended user or group of users of a product or service is merely descriptive.  E.g., In re Planalytics, Inc., 70 USPQ2d 1453 (TTAB 2004) (holding GASBUYER merely descriptive of intended user of risk management services in the field of pricing and purchasing natural gas); In re Camel Mfg. Co., 222 USPQ 1031 (TTAB 1984) (holding MOUNTAIN CAMPER merely descriptive of intended users of retail and mail order services in the field of outdoor equipment and apparel); see TMEP §1209.03(i).

 

Applicant has applied to register the mark TIREBUYER (standard characters) for “Financial information and advice relating to insurance for tires; insurance brokerage for tires; lease purchase financing of tires” in International Class 36.  The applied-for mark is a combination of terms that forms a merely descriptive composite mark.

 

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 Cannon Safe, Inc., 116 USPQ2d 1348, 1351 (TTAB 2015) (holding SMART SERIES merely descriptive of metal gun safes); In re King Koil Licensing Co., 79 USPQ2d 1048, 1052 (TTAB 2006) (holding THE BREATHABLE MATTRESS merely descriptive of beds, mattresses, box springs, and pillows). 

 

Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the 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 services and do not create a unique, incongruous, or nondescriptive meaning in relation to the services.  Specifically, the component terms of the applied-for mark are defined as follows.

 

TIRE: the rubber cover of a wheel, that is filled with air.

 

BUYER: someone who buys something.

 

See the dictionary definitions at Exhibit A.  Based on these dictionary definitions, the applied-for mark, TIREBUYER, means someone who buys tires or the rubber cover of a wheel, that is filled with air.

 

Applicant’s services are “Financial information and advice relating to insurance for tires; insurance brokerage for tires; lease purchase financing of tires” in International Class 36.  The identification of services shows that the services are related to tires.

 

In addition, applicant’s website, http://www.tirebuyer.com/, shows that applicant’s services are relating to tires and buying tires.  See the evidence from the applicant’s website at Exhibit B.

 

Therefore, registration on the Principal Register must be refused under Trademark Act Section 2(e)(1) because the applied-for mark is merely descriptive of the intended user of the applicant’s identified services, namely, indicating that the services are for use by a tire buyer.

 

Advisory: Claiming Section 2(f) acquired distinctiveness

 

Applicant may amend the application to assert a claim of acquired distinctiveness under Trademark Act Section 2(f) based on ownership of active U.S. Registration Nos. 4987171, 4987173, 6452394, and 6452395.  See 15 U.S.C. §1052(f); TMEP §§1212.04 et seq.  To do so, applicant must request that the application be amended to assert a claim of acquired distinctiveness under Section 2(f) and submit the following statement, if accurate:

 

The mark has become distinctive of the goods and/or services as evidenced by the ownership of active U.S. Registration Nos. 4987171, 4987173, 6452394, and 6452395 on the Principal Register for the same mark for sufficiently similar goods and/or services.

 

TMEP §1212.04(e); see 37 C.F.R. §2.41(a)(1).

 

In addition, the application record indicates that applicant has used its mark for a long time; therefore, applicant has the option to amend the application to assert a claim of acquired distinctiveness under Trademark Act Section 2(f).  See 15 U.S.C. §1052(f); TMEP §1212.05.

 

To amend the application to Section 2(f) based on five years’ use, applicant should request that the application be amended to assert a claim of acquired distinctiveness under Section 2(f) and submit the following written statement claiming acquired distinctiveness, if accurate:

 

The mark has become distinctive of the 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 the five years immediately before the date of this statement.

 

TMEP §1212.05(d); see 15 U.S.C. §1052(f); 37 C.F.R. §2.41(a)(2); TMEP §1212.08.  This statement must be verified with an affidavit or signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.41(a)(2); TMEP §1212.05(d); see 37 C.F.R. §2.193(e)(1).

 

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

Office action questions. 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. 

 

 

/Tina Brown/

Trademark Examining Attorney

Law Office 118

E: tina.brown@uspto.gov

T: 571-272-8864

 

 

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 September 19, 2021 for

U.S. Trademark Application Serial No. 90542309

 

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. 

 

 

/Tina Brown/

Trademark Examining Attorney

Law Office 118

E: tina.brown@uspto.gov

T: 571-272-8864

 

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 September 19, 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.”