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:  April 15, 2022

 

 

This action is further to applicant’s March 24, 2022 response.

 

STATUS:  Registration was refused on two grounds:  a) a likelihood of confusion with another registration; and b) a specimen refusal. 

 

The examining attorney has determined that the Section 2(d) likelihood of confusion refusal will be withdrawn.  However, the arguments presented in favor of withdrawing the specimen refusal are not persuasive, so the specimen refusal is maintained.

 

Upon further review, the examining attorney has determined there are grounds upon which to refuse the application based on Section 2(e)(1) of the Trademark Act.  Please see details below.  The examining attorney apologizes for any inconvenience this may have caused. 

 

 

SECTION 2(E)(1) REFUSAL – MARK IS PRIMARILY MERELY DESCRIPTIVE

 

Registration is refused because the applied-for mark merely describes purpose or function of applicant’s goods.  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 immediately conveys information concerning a feature, quality, or characteristic of [an applicant’s] goods or services.”  In re N.C. Lottery, 866 F.3d 1363, 1367, 123 USPQ2d 1707, 1709 (Fed. Cir. 2017) (citing In re Bayer Aktiengesellschaft, 488 F.3d 960, 963, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)); TMEP §1209.01(b); see DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (quoting In re Abcor Dev. Corp., 588 F.2d 811, 814, 200 USPQ 215, 218 (C.C.P.A. 1978)). 

 

The mark is BOOST for use with “Booster seats and baby bouncer seats; non-metal baby stools and baby step stools; children's furniture, namely, a baby seat made from plastic and/or polyurethane.” 

 

The term BOOST is defined as “to lift someone up, so that they can reach something that is high up,” as a verb, or “a push upward” as a noun.  (See attached definitions from Macmillan Dictionary and Merriam-Webster). 

 

Terms that describe the function or purpose of a product or service may be merely descriptive.  TMEP §1209.03(p); see, e.g., In re Hunter Fan Co., 78 USPQ2d 1474, 1477 (TTAB 2006) (holding ERGONOMIC merely descriptive of ceiling fans); In re Wallyball, Inc., 222 USPQ 87, 89 (TTAB 1984) (holding WALLYBALL merely descriptive of sports clothing and game equipment); In re Orleans Wines, Ltd., 196 USPQ 516, 517 (TTAB 1977) (holding BREADSPRED merely descriptive of jams and jellies). 

 

In this case, the term BOOST describes the purpose of the booster seats as they are used to “boost” or lift babies and toddlers up on a chair.  The attached article on the use of booster seats at a table uses the term descriptively when referring to booster seats as “a booster seat boosts your child up so ta the seat belt fits across the strongest bones…”  (See attachment).  Two additional articles on the use of booster seats uses the term descriptively when referring to booster seats as “a booster seat boosts your child up so ta the seat belt fits across the strongest bones…” and “It boosts your child high enough for your vehicle’s lap and shoulder belts to restrain her safely.” (See attachments). 

 

Applicant’s competitors use the term BOOST descriptively to refer to their similar products.  (See attachments describing booster seats as “Our seat boosts your child up to just the right height;” “Our seat boosts your child up to just the right height when they want to sit at the table on a “proper” chair.”)

 

Even applicant uses the term to describe the product, as shown in the specimen of record, and on the attached screenshot from applicant’s website, applicant refers to “Give your toddler a boost at the table;” and “This means that children not only getting a boost from booster chair…”  (See attachment). 

 

Descriptiveness is considered in relation to the relevant goods and/or services.  DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012).  “That a term may have other meanings in different contexts is not controlling.” Robinson v. Hot Grabba Leaf, LLC, 2019 USPQ2d 149089, at *5 (TTAB 2019) (citing In re Canine Caviar Pet Foods, Inc., 126 USPQ2d 1590, 1598 (TTAB 2018)); TMEP §1209.03(e).  “It is well settled that so long as any one of the meanings of a term is descriptive, the term may be considered to be merely descriptive.”  In re Mueller Sports Med., Inc., 126 USPQ2d 1584, 1590 (TTAB 2018) (quoting In re Chopper Indus., 222 USPQ 258, 259 (TTAB 1984)).  While the term BOOST can also convey the idea of an emotional motivation, the term is not analyzed in a vacuum, but rather in relation to the goods it identifies.  When used in connection with booster seats, the consuming public will have immediate information about the purpose of and type of goods. 

 

Accordingly, registration is refused because the mark is primarily merely descriptive under Section 2(e)(1) of the Trademark Act.

 

Advisory:  In addition to being merely descriptive, the applied-for mark appears to be generic in connection with the identified goods.  “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. 

 

 

 

SPECIMEN REFUSAL IS MAINTAINED AND CONTINUED

 

Mark shown on drawing does not match mark on specimen.  Registration is refused because the specimen does not show the mark in the drawing in use in commerce in International Class(es) 20, which is required in the application or amendment to allege use.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a), 1301.04(g)(i).  The mark appearing on the specimen and in the drawing must match; that is, the mark in the drawing “must be a substantially exact representation of the mark” on the specimen.  See 37 C.F.R. §2.51(a)-(b); TMEP §807.12(a).

 

In this case, the specimen displays the mark as UPSEAT BOOST.  However, the drawing displays the mark as BOOST.  The mark on the specimen does not match the mark in the drawing.  Applicant has thus failed to provide the required evidence of use of the mark in commerce.  See TMEP §807.12(a).

 

Applicant argues that the term BOOST is separable from the term UPSEAT.  However, the brand, as show on the specimen, refers to UPSEAT BOOST.  (References include:  Upseat Boost Toddler Booster Seat for Dining Table; The Upseat Boost toddler chair is made from a foam material…).  Moreover, applicant’s website refers to the products by the name “Upseat Boost,” and if anything, refers to them using the term “Upseat” alone, as shown engraved on the booster seat.  (See attachment from applicant’s website). 

 

Response options.  Applicant may respond to this refusal by satisfying one of the following:

 

(1)       Submit a different specimen (a verified “substitute” specimen) for each applicable international class that (a) shows the mark in the drawing in actual use in commerce for the goods and/or services in the application or amendment to allege use, and (b) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use.

 

Examples of specimens.  Specimens for goods include a photograph of (1) the actual goods bearing the mark; (2) an actual container, packaging, tag or label for the goods bearing the mark; or (3) a point-of-sale display showing the mark directly associated with the goods.  See 37 C.F.R. §2.56(b)(1), (c); TMEP §904.03(a)-(m).  A webpage specimen submitted as a display associated with the goods must show the mark in association with a picture or textual description of the goods and include information necessary for ordering the goods.  TMEP §904.03(i); see 37 C.F.R. §2.56(b)(1), (c). 

 

Specimens for services must show a direct association between the mark and the services and include: (1) copies of advertising and marketing material, (2) a photograph of business signage or billboards, or (3) materials showing the mark in the sale, rendering, or advertising of the services.  See 37 C.F.R. §2.56(b)(1), (c); TMEP §1301.04(a), (h)(iv)(C). 

 

Any webpage printout or screenshot submitted as a specimen must include the webpage’s URL and the date it was accessed or printed on the specimen itself, within the TEAS form that submits the specimen, or in a verified statement under 37 C.F.R. §2.20 or 28 U.S.C. §1746 in a later-filed response.  See 37 C.F.R. §2.56(c); TMEP §§904.03(i), 1301.04(a).

 

(2)       Submit a request to amend the filing basis to intent to use under Section 1(b) (which includes withdrawing an amendment to allege use, if one was filed), as no specimen is required before publication.  This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.

 

The USPTO will not accept an amended drawing submitted in response to this refusal because the changes would materially alter the drawing of the mark in the original application or as previously acceptably amended.  See 37 C.F.R. §2.72(a)-(b); TMEP §807.14.  Specifically, amending the mark on the drawing to agree with the mark on the specimen would be a material alteration because the commercial impression of the mark is altered by the addition of a distinctive term like UPSEAT.  As a general rule, the addition of any element that would require a further search will constitute a material alteration. In re Pierce Foods Corp., 230 USPQ 307 (TTAB 1986).  See TMEP 807.14.  Also, the additional term was not part of the original search, so the search is considered incomplete and a factor taken into consideration when finding this consists of a material alteration.   The mark does not appear as separable matter from the rest of the wording appearing in the specimen. 

 

For more information about drawings and instructions on how to satisfy these response options using the online Trademark Electronic Application System (TEAS) form, see the Drawing webpage.

 

 

 

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

 

 

/Giselle Agosto-Hincapie/

Examining Attorney Advisor

Trademarks Law Office 102

giselle.agosto@uspto.gov (Informal inquires only)

571-272-5868

 

 

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 April 15, 2022 for

U.S. Trademark Application Serial No. 90555802

 

A USPTO examining attorney has reviewed your trademark application and issued an Office action.  You must respond to this Office action in order to avoid your application abandoning.  Follow the steps below.

 

(1)  Read the Office action.  This email is NOT the Office action.

 

(2)  Respond to the Office action by the deadline using the Trademark Electronic Application System (TEAS).  Your response must be received by the USPTO on or before 11:59 p.m. Eastern Time of the last day of the response period.  Otherwise, your application will be abandoned.  See the Office action itself regarding how to respond.

 

(3)  Direct general questions about using USPTO electronic forms, the USPTO website, the application process, the status of your application, and whether there are outstanding deadlines to the Trademark Assistance Center (TAC).

 

After reading the Office action, address any question(s) regarding the specific content to the USPTO examining attorney identified in the Office action.

 

 

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 to ensure you receive important USPTO notices about your application.

 

·       Beware of trademark-related scams.  Protect yourself from people and companies that may try to take financial advantage of you.  Private companies may call you and pretend to be the USPTO or may send you communications that resemble official USPTO documents to trick you.  We will never request your credit card number or social security number over the phone.  And all official USPTO correspondence will only be emailed from the domain “@uspto.gov.”  Verify the correspondence originated from us by using your Serial Number in our database, TSDR, to confirm that it appears under the “Documents” tab, or contact the Trademark Assistance Center.

 

·       Hiring a U.S.-licensed attorney.  If you do not have an attorney and are not required to have one under the trademark rules, we encourage you to hire a U.S.-licensed attorney specializing in trademark law to help guide you through the registration process.  The USPTO examining attorney is not your attorney and cannot give you legal advice, but rather works for and represents the USPTO in trademark matters.