United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90763289
Mark: MOBILE
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Correspondence Address: PERETZ CHESAL & HERRMANN, P.L.
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Applicant: HD Mobile Importing and Marketing Ltd
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Reference/Docket No. HDM.001UST
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: March 07, 2022
REFUSAL BASED ON DESCRIPTIVENESS – TRADEMARK ACT SECTION 2(e)(1)--PARTIAL
The examining attorney refuses registration on the Principal Register because the proposed mark is merely descriptive of the identified goods. Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1); TMEP section 1209 et seq.
A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods. 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)).
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).
In this case, applicant’s mark, “MOBILE” is a descriptive characteristic of the goods. The applicant’s goods are “Infant toys; Toy cameras; Toy strollers; Toy watches.” The applicant’s mark merely describes a feature, quality or characteristic of applicant’s goods. “Mobile” is defined as “a decorative structure that is suspended so as to turn freely in the air. ‘brightly colored mobiles rotated from the ceiling’”. www.lexico.com. Referring to the term “mobile” with regard to infant toys is common. The excerpted evidence from the GOOGLE research database, retrieved on March 7, 2022, shows that the term “mobile” and baby appeared 3,430,000,000 times. www.GOOGLE.com. Only a representative sampling of hits is attached because of the large number of hits responsive to the search request and the duplicative or irrelevant nature of some of the stories. The evidence demonstrates that the term “mobile” is frequently used to describe infant toys. In this case, the applicant’s goods are infant toys, therefore, the proposed mark describes a characteristic of the goods.
“A mark may be merely descriptive even if it does not describe the ‘full scope and extent’ of the applicant’s goods or services.” In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004) (citing In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1346, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001)); TMEP §1209.01(b). It is enough if a mark describes only one significant function, attribute, or property. In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); TMEP §1209.01(b); see In re Oppedahl & Larson LLP, 373 F.3d at 1173, 71 USPQ2d at 1371. In this case, the proposed mark describes the goods themselves, thus the proposed mark is descriptive.
Finally, there is nothing incongruous or indefinite about the term “MOBILE.” Nothing requires the exercise of imagination, cogitation, mental processing or gathering of further information in order for a significant portion of the purchaser’s of applicant’s goods to readily perceive the merely descriptive significance of the mark as it relates to “infant toys.” Such significance in regard to the proposed mark would be immediately apparent. In re Gould Paper Corp., 5 USPQ2d 1110, 1112 (Fed. Cir. 1987).
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration. The examining attorney also includes the following prior pending application advisory.
PRIOR PENDING APPLICATION
Although the examining attorney has searched the Office records and has found no similar registered mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), the examining attorney encloses information regarding pending Application Serial no. 90814447. There may be a likelihood of confusion between the applicant’s mark and the mark noted above under Section 2(d) of the Act. The filing date of the referenced application precedes the applicant’s filing date. If the earlier filed application matures into a registration, the examining attorney may refuse registration in this case under Section 2(d). 37 C.F.R. Section 2.83; TMEP §§1207.01 et seq.
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973)); TMEP §1207.01(b)-(b)(v). Similarity in any one of these elements may be sufficient to find the marks confusingly similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b).
Applicant seeks to register the mark “MOBILE.” The prior pending application is for the mark “ILMOBILE.” The marks are highly similar in spelling, appearance and pronunciation.
Applicant’s goods are described as “Infant toys; Toy cameras; Toy strollers; Toy watches.” Application Serial No. 90814447 is for “Puzzles; Board games; Checkers games; Dolls for playing; Infant toys; Infant action crib toys; Manipulative games; Spinning tops; Toy models; Jigsaw puzzles.” These goods are highly similar and identical and thus, are of a type that could be expected to come from the same source.
If the applicant believes that there is no potential conflict between this application and the earlier-filed application, the applicant may present arguments relevant to the issue. The election to file or not to file a response to this issue at this time in no way limits the applicant’s right to address this issue at a later point.
How to respond. Click to file a response to this nonfinal Office action.
/Caroline E. Wood/
Trademark Examining Attorney
caroline.wood@uspto.gov
Law Office 110
(571) 272-9243
RESPONSE GUIDANCE