To: | Alf InterFACE Academy, Inc (tmattorneyPTO@aol.com) |
Subject: | U.S. Trademark Application Serial No. 90685139 - ALF - A275 004TM21 |
Sent: | January 14, 2022 03:30:30 PM |
Sent As: | ecom303@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. 90685139
Mark: ALF
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Correspondence Address: |
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Applicant: Alf InterFACE Academy, Inc
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Reference/Docket No. A275 004TM21
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: January 14, 2022
Summary of Issues
· Search Results – No Conflicting Marks Found
· Section 2(e)(1) – Merely Descriptive Refusal
· Incorrect Classification of a Particular Item in a List–Amendment Required
· Multi-Class Identification and Classification of Goods and Services–Amendment Required
Search Results – No Conflicting Marks Found
Section 2(e)(1) – Merely Descriptive Refusal
Here, applicant has applied to register the mark ALF for use in connection with “Dental appliances, devices, tools, retainers and equipment parts, namely, an orthodontic appliance using
light wires; Dentistry services” in Class 010.
An abbreviation, initialism, or acronym is merely descriptive when it is generally understood as “substantially synonymous” with the descriptive words it represents. See In re Thomas Nelson, Inc., 97 USPQ2d 1712, 1715 (TTAB 2011) (citing Modern Optics, Inc. v. Univis Lens Co., 234 F.2d 504, 506, 110 USPQ 293, 295 (C.C.P.A. 1956)) (holding NKJV substantially synonymous with merely descriptive term “New King James Version” and thus merely descriptive of bibles); In re BetaBatt Inc., 89 USPQ2d 1152, 1155 (TTAB 2008) (holding DEC substantially synonymous with merely descriptive term “direct energy conversion” and thus merely descriptive of a type of batteries and battery related services); TMEP §1209.03(h).
A mark consisting of an abbreviation, initialism, or acronym will be considered substantially synonymous with descriptive wording if:
(1) the applied-for mark is an abbreviation, initialism, or acronym for specific wording;
(2) the specific wording is merely descriptive of applicant’s goods and/or services; and
(3) a relevant consumer viewing the abbreviation, initialism, or acronym in connection with applicant’s goods and/or services will recognize it as the equivalent of the merely descriptive wording it represents.
TMEP §1209.03(h); see In re Thomas Nelson, Inc., 97 USPQ2d at 1715-16 (citing In re Harco Corp., 220 USPQ 1075, 1076 (TTAB 1984)).
The attached evidence shows that ALF identifies ADVANCED LIGHTWIRE FUNCTIONAL appliances, also known as ADVANCED LIGHT FORCE appliances. In that regard, Applicant’s website indicates that the acronym ALF stands for “Advanced Light Force also known as the Advanced Lightwire Functional(ALF).” See attached evidence. The identified goods would include the above-named orthodontic appliances and the services would include the use of the appliances.
Specifically, applicant’s website states that the appliance “uses light forces to the teeth and gums,” and that the goods are an “orthodontic appliance consisting of light wires,” hence the meaning ADVANCED LIGHT FORCE and ADVANCED LIGHTWIRE FUNCTIONAL for the acronym ALF. In both instances, the acronym is descriptive when used in association with the identified goods and services because it merely describes the “light force/ light wire” feature, characteristic, and function of applicant’s goods and services.
Further, the attached evidence from NaturalDentistry.com, WinchesterDental.com, BoltonDental.com, and RichmondFamilyDentistry.com demonstrates that when customers come in contact with the acronym ALF, it is common in the industry for an explanation of the acronym to immediately follow the acronym. The evidence also shows that ALF is an acronym used by many sources to indicate the goods and services associated with the orthodontic appliance, and not the applicant as the source of the orthodontic appliance or the associated services.
A relevant consumer viewing applicant’s mark in connection with the identified goods and/or services would recognize it as the equivalent of the descriptive wording it represents because many different sources use the acronym to identify the orthodontic appliance or the services associated with the appliance, not as a source indicator of the appliance or services.
Ultimately, when purchasers encounter applicant’s goods and services using the mark ALF, they will immediately understand the mark as indicating a feature, characteristic, and function of the goods and services, and not an indication that applicant is the source of the goods and services. Therefore, the mark is merely descriptive, and registration is refused pursuant to Section 2(e)(1) of the Trademark Act.
Advisory regarding Amendment to the Supplemental Register to Overcome Refusals
(1) Use of the registration symbol ® with the registered mark in connection with the designated goods and/or services, which provides public notice of the registration and potentially deters third parties from using confusingly similar marks.
(2) Inclusion of the registered mark in the USPTO’s database of registered and pending marks, which will (a) make it easier for third parties to find it in trademark search reports, (b) provide public notice of the registration, and thus (c) potentially deter third parties from using confusingly similar marks.
(3) Use of the registration by a USPTO trademark examining attorney as a bar to registering confusingly similar marks in applications filed by third parties.
(4) Use of the registration as a basis to bring suit for trademark infringement in federal court, which, although more costly than state court, means judges with more trademark experience, often faster adjudications, and the opportunity to seek an injunction, actual damages, and attorneys’ fees and costs.
(5) Use of the registration as a filing basis for a trademark application for registration in certain foreign countries, in accordance with international treaties.
See 15 U.S.C. §§1052(d), 1091, 1094; J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition §§19:33, 19:37 (rev. 4th ed. Supp. 2017).
Incorrect Classification of a Particular Item in a List–Amendment Required
Applicant has classified “dentistry services” in International Class 010; however, the proper classification is International Class 044. Therefore, applicant may respond by (1) adding International Class 044 to the application and reclassifying these goods and/or services in the proper international class, (2) deleting “dentistry services” from the application, or (3) deleting the remainder of the items in the identification and reclassifying the specified goods and/or services in the proper international class. See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq. If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
Multi-Class Identification and Classification of Goods and Services–Amendment Required
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 010: Dental appliances, devices, tools, retainers and equipment parts, namely, an orthodontic appliance using light wires; International Class 044: Dentistry services).
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). Specifically, the application identifies goods and/or services based on use in commerce that are classified in at least 2 classes; however, applicant submitted a fee(s) sufficient for only 1 class. Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.
(3) Submit verified dates of first use of the mark anywhere and in commerce for each international class. See more information about verified dates of use.
(4) Submit a specimen for each international class. The current specimen is acceptable for classes 010 and 044. See more information about specimens.
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)(2), (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).
(5) Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.” See more information about verification.
See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).
For an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.
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.
/Audriana Osborne/
Audriana Osborne
Examining Attorney, Law Office 303
U.S. Patent and Trademark Office
Audriana.osborne@uspto.gov
571-270-5671
RESPONSE GUIDANCE