To: | Garga-Richardson, Archie (tdifloure@gmail.com) |
Subject: | U.S. Trademark Application Serial No. 90723980 - SCAMFRAUDALERT - N/A |
Sent: | February 09, 2022 11:13:40 PM |
Sent As: | ecom113@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90723980
Mark: SCAMFRAUDALERT
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Correspondence Address: LAW OFFICE OF THOMAS L. DIFLOURE
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Applicant: Garga-Richardson, Archie
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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.
SEARCH OF USPTO DATABASE OF MARKS
SECTION 2(e)(1) – MERE DESCRIPTIVENESS REFUSAL
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.
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
SECTION 2(f) ACQUIRED DISTINCTIVENESS - ADVISORY
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
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
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)
(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
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.
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