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:  December 15, 2021

 

The referenced application has 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 Office’s 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:

 

• Sections 1, 2, and 45 refusal: merely ornamental use (only as to Class 025); and
• Amended identification of goods and services required (only as to the goods and services specified below).

 

Sections 1, 2, and 45 Refusal: Merely Ornamental Use

 

The stated refusal refers to International Class 025 only and does not bar registration in the other classes.

 

Registration is refused because the applied-for mark, as used on the specimen of record, is merely a decorative or ornamental feature of applicant’s clothing and, thus, does not function as a trademark to indicate the source of applicant’s clothing and to identify and distinguish it from others.  Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051-1052, 1127; see In re Lululemon Athletica Can. Inc., 105 USPQ2d 1684, 1689 (TTAB 2013); TMEP §§904.07(b), 1202.03 et seq.

 

The size, location, dominance, and significance of the alleged mark as used on the goods are all relevant factors in determining the commercial impression of the applied-for mark.  See, e.g., In re Peace Love World Live, LLC, 127 USPQ2d 1400, 1403 (TTAB 2018) (quoting In re Hulting, 107 USPQ2d 1175, 1178 (TTAB 2013)); TMEP §1202.03(a).

 

With respect to clothing, consumers may recognize small designs or discrete wording as trademarks, rather than as merely ornamental features, when located, for example, on the pocket or breast area of a shirt.  See TMEP §1202.03(a).  Consumers may not, however, perceive larger designs or slogans as trademarks when such matter is prominently displayed across the front of a shirt.  See In re Pro-Line Corp., 28 USPQ2d at 1142; TMEP §1202.03(a), (b), (f)(i), (f)(ii).

 

In this case, the submitted specimen shows the applied-for mark, SP5DER, located directly on the upper-center area of the front of a sweatshirt, where ornamental elements often appear.  See TMEP §1202.03(a), (b).  Furthermore, the mark is displayed in a relatively large size on the clothing such that it dominates the overall appearance of the goods.  Lastly, the applied-for mark appears to be a slogan or design element that is used in a merely decorative manner that would be perceived by consumers as having little or no particular source-identifying significance.

 

Therefore, consumers would view the applied-for mark as a decorative or ornamental feature of the goods, rather than as a trademark to indicate the source of applicant’s goods and to distinguish them from others.

 

In appropriate circumstances, applicant may overcome this refusal by satisfying one of the following options:

 

(1)       Submit a different specimen (a verified “substitute” specimen) that was in actual use in commerce at least as early as the filing date of the application and that shows proper trademark use for the identified goods in International Class 25.  Examples of acceptable specimens that show non-ornamental use on clothing include hang tags and labels used inside a garment.

 

(2)       Amend to the Supplemental Register, which is a second trademark register for marks not yet eligible for registration on the Principal Register, but which may become capable over time of functioning as source indicators.

 

(3)       Claim acquired distinctiveness under Trademark Act Section 2(f) by submitting evidence that the applied-for mark has become distinctive of applicant’s goods; that is, proof that applicant’s extensive use and promotion of the mark allowed consumers now directly to associate the mark with applicant as the source of the goods.

 

(4)       Submit evidence that the applied-for mark is an indicator of secondary source; that is, proof that the mark is already recognized as a source indicator for other goods or services that applicant sells/offers.    

 

(5)       Amend the filing basis to intent to use under Section 1(b).  This option will later necessitate additional fee(s) and filing requirements.

 

For an overview of the response options above and instructions on how to satisfy each option online using the Trademark Electronic Application System (TEAS) form, see the Ornamental Refusal webpage.

 

Applicant may also respond to the stated refusal by doing one of the following:

 

(1)  Deleting the class to which the refusal pertains; or

 

(2)  Filing a Request to Divide Application form (form #3) to divide out the goods and/or services that have not been refused registration so that the mark may proceed toward publication for opposition in the classes to which the refusal does not pertain.  See 37 C.F.R. §2.87.  See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide).  If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to this Office action, including the refusal.  37 C.F.R. §2.87(e).

 

Applicant must also respond to the following requirement.

 

Amended Identification of Goods and Services Required

 

The stated requirement refers only to the goods and services specified below and does not bar registration for the other goods and/or services identified in the application.

 

The classification and identification of goods and services in the application are:

 

Class 009:       Downloadable virtual goods, namely, computer programs featuring footwear, clothing, headwear, eyewear, bags, sports bags, backpacks, sports equipment, art, toys and accessories for use in online virtual worlds

 

Class 025:       Coats; Dresses; Hats; Headbands; Jeans; Sandals; Shirts; Shoes; Shorts; Slacks; Suits; Sweatshirts; T-shirts; Bucket hats; Jackets; Sweat pants; Track suits

 

Class 041:       Entertainment services, namely, providing on-line, non-downloadable virtual footwear, clothing, headwear, eyewear, sports bags, backpacks, sports equipment, art, toys and accessories for use in virtual environments created for entertainment purposes

 

The wording that is underlined in the identification of goods and services, above, is indefinite and must be clarified to specify the nature of the accessories.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Applicant may adopt any or all of the following identification, if accurate.  In the following, proposed amendments are in bold.

 

Class 009:       Downloadable virtual goods, namely, computer programs featuring footwear, clothing, headwear, eyewear, bags, sports bags, backpacks, sports equipment, art, toys and clothing accessories for use in online virtual worlds

 

Class 025:       Coats; Dresses; Hats; Headbands; Jeans; Sandals; Shirts; Shoes; Shorts; Slacks; Suits; Sweatshirts; T-shirts; Bucket hats; Jackets; Sweat pants; Track suits

 

Class 041:       Entertainment services, namely, providing on-line, non-downloadable virtual footwear, clothing, headwear, eyewear, sports bags, backpacks, sports equipment, art, toys and clothing accessories for use in virtual environments created for entertainment purposes

 

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.

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or 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 goods and/or services may not later be reinserted.  See TMEP §1402.07(e).

 

In addition to amending the identification as suggested, applicant may respond to the stated requirement by doing one of the following:

 

(1)  Deleting the goods and services to which the requirement pertains; or

 

(2)  Filing a Request to Divide Application form (form #3) to divide out the goods and/or services that have not been refused registration so that the mark may proceed toward publication for opposition for those goods and/or services to which the requirement does not pertain.  See 37 C.F.R. §2.87.  See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide).  If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to this Office action.  37 C.F.R. §2.87(e).

 

Response to Office Action Required to Avoid Abandonment

 

Applicant may email the assigned trademark examining attorney with questions about this Office action.  The examining attorney cannot provide legal advice, but the examining attorney can provide additional explanation about the refusal and requirement 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.    

 

 

Jeanine Gagliardi

/Jeanine Gagliardi/

Examining Attorney

Law Office 120

571-272-3177

jeanine.gagliardi@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 December 15, 2021 for

U.S. Trademark Application Serial No. 97141391

 

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.