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:  February 09, 2022

 

The referenced application and preliminary amendment have 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 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.

 

SUMMARY OF ISSUES:

• Section 2(e)(1) – Mere Descriptiveness Refusal
• Section 2(f) Acquired Distinctiveness - Advisory
• Identification of Services Indefinite and Misclassified – Amendment Required
• Clarification of The Number of Classes For Which Registration Is Sought Required
• Advisory – Multiple Class Application Requirements For Applications Based On Section 1(a)
• Applicant’s Domicile Address Required

 

SECTION 2(e)(1) – MERE DESCRIPTIVENESS REFUSAL

 

Registration is refused because the applied-for mark merely describes a feature, characteristic and purpose 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 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)). 

 

Here, applicant has applied to register the mark SCAMFRAUDALERT for use in connection with “Providing an on-line forum and blogs, for tracking, reporting, and assisting consumers in the prevention of fraudulent business practices online scam and fraud” in Class 38.

 

The word SCAM is defined as “a fraudulent business scheme,” the word FRAUD means “a deception practiced in order to induce another to give up possession of property or surrender a right” and ALERT is defined as “a signal that warns of attack or danger.” Applicant’s website describes applicant as “an internet online consumer protection watchdog group” that “report[s] on scams, fraud, consumer news, and other questionable business practices online.” See the attached evidence from applicant’s website. Thus, the wording SCAMFRAUDALERT merely conveys the purpose and subject matter of applicant’s services, namely, that applicant’s online forum and blogs warn the public about fraudulent business schemes and deceptions intended to induce people to give up their property or rights. Applicant’s own use of the words SCAM and FRAUD in the identification to describe applicant’s services further suggestions the descriptiveness of the terms.

 

Moreover, the attached third-party evidence from Northern Hills Technology, Flint Creek Courier and FCP Live-In Caregiver establishes that consumers are accustomed to encountering the terms SCAM, FRAUD and ALERT used together to convey similar information. Specifically, to inform the public of fraudulent business schemes or deceptions intended to induce the surrender of property or rights.

 

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 terms SCAM, FRAUD and ALERT maintain their individual descriptive meanings of “a fraudulent business scheme,” “a deception practiced in order to induce another to give up possession of property or surrender a right” and “a signal that warns of attack or danger” despite their combination. Thus, no unique, incongruous, or nondescriptive meaning in relation to the services is created by the combination of the terms. 

 

Ultimately, when purchasers encounter applicant’s services using the mark SCAMFRAUDALERT, they will immediately understand the mark as indicating a feature and purpose of the services, namely, that applicant’s online forum and blogs warn the public about fraudulent business schemes and deceptions intended to induce people to give up their property or rights, and not an indication that applicant is the source of the services. Therefore, the mark is merely descriptive and registration is refused pursuant to Section 2(e)(1) of the Trademark Act.

 

Response to Section 2(e)(1) – Mere Descriptiveness Refusal

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.

 

SECTION 2(f) ACQUIRED DISTINCTIVENESS - ADVISORY

 

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).

 

To establish acquired distinctiveness, an applicant may rely only on use in commerce that may be regulated by the U.S. Congress.  See 15 U.S.C. §§1052(f), 1127.  Use solely in a foreign country or between two foreign countries is not evidence of acquired distinctiveness in the United States.  TMEP §§1010, 1212.08; see In re Rogers, 53 USPQ2d 1741, 1746-47 (TTAB 1999).”

 

REQUIREMENTS

 

If applicant responds to the refusal, applicant must also respond to the requirements set forth below.

 

IDENTIFICATION OF SERVICES INDEFINITE AND INCORRECTLY CLASSIFIED – AMENDMENT REQUIRED

 

The wording, “Providing … blogs” is both indefinite and incorrectly classified in Class 38. This wording is indefinite because the nature of the blog services is not clear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Furthermore, providing a website featuring blogs is properly classified in International Class 41. Therefore, applicant may respond by (1) adding International Class 41 to the application and reclassifying the services in the proper international class, (2) deleting “blogs” from the application, or (3) deleting the remainder of the items in the identification and reclassifying the specified services in the proper international class.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq. Applicant must amend the application to appropriately clarify the services and classify them accordingly, e.g., providing a website featuring blogs and non-downloadable publications in the nature of articles in the field of prevention of fraudulent business practices, online scams and fraud.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.

 

Applicant may substitute the following wording, if accurate: 

 

Class 38: Providing an on-line forum and blogs, for tracking, reporting, and assisting consumers in the prevention of fraudulent business practices, online scams and fraud

 

Class 41: Providing a website featuring blogs and non-downloadable publications in the nature of {indicate form of publications, e.g., articles, brochures, etc.} in the field of {indicate subject matter or field, e.g., prevention of fraudulent business practices, online scams and fraud}

 

TMEP §1402.01

 

Applicant may amend the identification to clarify or limit the services, but not to broaden or expand the services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted services may not later be reinserted.  See TMEP §1402.07(e).

 

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.

 

CLARIFICATION OF THE NUMBER OF CLASSES FOR WHICH REGISTRATION IS SOUGHT REQUIRED

 

The application identifies services that could be classified in at least two classes; however, applicant submitted a fee sufficient for only one class.  In a multiple-class application, a fee for each class is required.  37 C.F.R. §2.86(a)(2), (b)(2); TMEP §§810.01, 1403.01.  For more information about adding classes to an application, see the Multiple-class Application webpage.

 

Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.

 

ADVISORY – MULTIPLE CLASS APPLICATION REQUIREMENTS FOR APPLICATIONS BASED ON SECTION 1(a)

 

The application references services based on use in commerce in more than one international class; therefore, applicant must satisfy all the requirements below for each international class:

 

(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 3: perfume; International Class 18: cosmetic bags sold empty).

 

(2)        Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule).  Specifically, the application identifies services based on use in commerce that are classified in at least two classes; however, applicant submitted a fee sufficient for only one 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 class 38; and applicant needs a specimen for class 41.  See more information about specimens.

 

Examples of specimens.  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.

 

APPLICANT’S DOMICILE ADDRESS REQUIRED

 

Applicant must clarify its domicile street address because the domicile address of record is for a third-party commercial office space/virtual office and does not appear to be applicant’s permanent legal place of residence or principal place of business.  See 37 C.F.R. §§2.11(b), 2.189; TMEP §601.01(b)(1).  A domicile address must identify either (1) the permanent legal place of residence, which is the place an individual applicant resides and intends to be the applicant’s principal home; or (2) the principal place of business, which is the juristic applicant’s headquarters where its senior executives or officers ordinarily direct and control the entity’s activities.  See37 C.F.R. §2.2(o)-(p); TMEP §803.05(a). 

 

Applications must include an applicant’s domicile address because such domicile determines whether an applicant is required to have a U.S.-licensed attorney represent it before the USPTO.  See 37 C.F.R. §§2.11(a), 2.32(a)(2); TMEP §§601, 803.05.  An applicant whose domicile is located outside of the United States or its territories must be represented at the USPTO by an attorney who is an active member in good standing of the bar of the highest court of a U.S. state or territory.  37 C.F.R. §2.11(a); TMEP §601.01(a).

 

In this case, the application lists applicant as an individual and specifies applicant’s domicile address as follows:  303 N Glenoaks Blvd. Burbank CA 91502.  According to the attached webpage evidence, this address is for a commercial office space/virtual office and thus does not appear to be the place applicant resides and intends to be applicant’s principal home.  See37 C.F.R. §2.2(o)-(p); TMEP §601.01(b)(1).   

 

Response options.  Applicant must provide its domicile street address.  See 37 C.F.R. §§2.32(a)(2), 2.189; TMEP §803.05.  Alternatively, applicant may provide documentation showing that the listed U.S. domicile address is, in fact, applicant’s domicile.  TMEP §§601.01(b)-(b)(1), 803.05; see 37 C.F.R. §2.11(b). 

 

If applicant amends the application to list a domicile street address located outside of the United States or its territories, applicant must appoint a U.S.-licensed attorney qualified under 37 C.F.R. §11.14 as its representative before the application may proceed to registration.  See 37 C.F.R. §2.11(a); TMEP §601.01(a).  See Hiring a U.S.-licensed trademark attorney for more information.  However, if applicant establishes its domicile street address is located within the United States or its territories, applicant is not required to appoint a qualified U.S.-licensed attorney.  See TMEP §601.01(b).

 

To provide applicant’s domicile street address.  After opening the correct Trademark Electronic Application System (TEAS) response form and entering the serial number, (1) answer “yes” to wizard question #5 and click “Continue;” (2) on the “Owner Information” page, in the “Domicile Address” field, uncheck the box stating the domicile and mailing address are not the same; and (3) below the checkbox provide applicant’s domicile street address.  Applicant’s domicile street address will be hidden from public view if it is entered into the “Domicile Address” field.  However, any street address listed in the “Mailing Address” field will be publicly viewable.

 

To provide documentation to support a U.S. domicile address.  Applicant should provide documentation showing the name and listed domicile address of the individual, for example one of the following:  (1) a current, valid signed rental, lease, or mortgage agreement; (2) a current, valid homeowner’s, renter’s, or motor vehicle insurance policy; or (3) a computer-generated bill issued by a utility company dated no earlier than 60 days before the application filing date.  TMEP §601.01(b)-(b)(1); see 37 C.F.R. §2.11(b).  Submitted documentation must show the name, listed domicile address, and the date of the document but should redact other personal and financial information. 

 

To submit the documentation, open the correct TEAS response form and enter the serial number, answer “yes” to wizard question #3, and on the “Additional Statement(s)” page, below the “Miscellaneous Statement” field, click the button below the text box to attach documentation to support the U.S. street address.

 

To appoint a U.S.-licensed attorney in this application, applicant should submit a completed TEAS Change Address or Representation form.  The newly-appointed attorney must submit a TEAS Response to Examining Attorney Office Action form indicating that an appointment of attorney has been made and address all other refusals or requirements in this action, if any.  Alternatively, if applicant retains an attorney before filing the response, the attorney can respond to this Office action by using the appropriate TEAS response form and provide his or her attorney information in the form and sign it as applicant’s attorney.  See 37 C.F.R. §2.17(b)(1)(ii); TMEP §604.01.

 

RESPONSE GUIDELINES

 

For this application to proceed, applicant must explicitly address each refusal and 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. 

 

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

 

 

/Danielle L. Anderson/

Danielle L. Anderson

Trademark Examining Attorney

Law Office 113, USPTO

571-272-6143

danielle.anderson@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 February 09, 2022 for

U.S. Trademark Application Serial No. 90723980

 

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 HERE.  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 misleading notices sent by private companies about your application.  Private companies not associated with the USPTO may mail or email you trademark-related offers and notices – most of which require fees.  The USPTO will only email official USPTO correspondence from the domain “@uspto.gov.”

 

·         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 identified above is not your attorney and cannot give you legal advice, but rather works for and represents the USPTO in trademark matters.