UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
| U.S. APPLICATION SERIAL NO. 87470872 MARK: COVFEFE | |
| CORRESPONDENT ADDRESS: | CLICK HERE TO RESPOND TO THIS LETTER: http://www.uspto.gov/trademarks/teas/response_forms.jsp |
| APPLICANT: JOEL VIDAL | |
| CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: | |
OFFICE ACTION
TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
ISSUE/MAILING DATE: 8/14/2017
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.
PRIOR-FILED APPLICATION – APPLICANT NOT ENTITLED TO REGISTER – APPLICANT MAY PRESENT ARGUMENTS
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
While applicant is not required to respond to the issue of the pending application, applicant must respond to the refusal and requirements below within six months of the mailing date of this Office action to avoid abandonment.
SECTIONS 1, 2, 3, AND 45 REFUSAL – DOES NOT FUNCTION AS A TRADEMARK – INFORMATIONAL MESSAGE
Registration is refused because the applied-for mark merely conveys an informational social, political, religious, or similar kind of message; it does not function as a trademark or service mark to indicate the source of applicant’s goods and to identify and distinguish them from others. Trademark Act Sections 1, 2, 3, and 45, 15 U.S.C. §§1051-1053, 1127; see In re Hulting, 107 USPQ2d 1175, 1177 (TTAB 2013) (holding NO MORE RINOS!, a slogan meaning “No More Republicans In Name Only,” not registrable for a variety of paper items, shirts, and novelty buttons because the mark would be perceived as a commonly used political slogan and not a trademark); In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229-31 (TTAB 2010) (holding ONCE A MARINE, ALWAYS A MARINE not registrable for clothing items because the mark would be perceived as an old and familiar Marine expression and not a trademark); In re Volvo Cars of N. Am., Inc., 46 USPQ2d 1455, 1460-61 (TTAB 1998) (holding DRIVE SAFELY not registrable for automobiles and automobile parts because the mark would be perceived as a familiar safety admonition and not a trademark); TMEP §1202.04.
Determining whether a term or slogan functions as a trademark or service mark depends on how it would be perceived by the relevant public. In re Eagle Crest, Inc., 96 USPQ2d at 1229; In re Aerospace Optics, Inc., 78 USPQ2d 1861, 1862 (TTAB 2006); TMEP §1202.04. Slogans or terms that merely convey an informational message are not registrable. In re Eagle Crest, Inc., 96 USPQ2d at 1229 (citing In re Boston Beer Co., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999)). The more commonly a term or slogan is used in everyday speech, the less likely the public will use it to identify only one source and the less likely the term or slogan will be recognized by purchasers as a trademark or service mark. See In re Hulting, 107 USPQ2d at 1177 (quoting In re Eagle Crest, Inc., 96 USPQ2d at 1229); TMEP §1202.04.
The attached evidence shows that the term COVFEFE is commonly used to refer to a term written by the President of the United States in a tweet. See evidence at https://www.nytimes.com/2017/05/31/us/politics/covfefe-trump-twitter.html, http://www.npr.org/2017/06/03/531264632/the-tweet-heard-around-the-wrold, http://www.macmillandictionaryblog.com/covfefe, http://www.urbandictionary.com/define.php?term=Covfefe, and https://twitter.com/realDonaldTrump/status/869858333477523458. The wording COVFEFE then became the source of a large amount of news articles, internet reporting, and social media postings. See https://www.wired.com/2017/05/internet-defines-covfefe/ (reporting on the reaction of individuals on the internet and social media websites to the post including the wording COVFEFE), https://www.youtube.com/watch?v=N1-xc3Q7iTE (reading the best reactions from the internet to the use of the wording COVFEFE from the President), https://www.instagram.com/explore/tags/covfefe/ (showing over 120,000 posts on the social media website Instagram.com using the hashtag #COVFEFE), http://www.bbc.com/news/world-us-canada-40104063 (reporting on the widespread reaction of individuals to the posting by the President of the wording COVFEFE), https://www.vox.com/policy-and-politics/2017/5/31/15718940/covfefe-meaning-trump-twitter (explaining the viral nature of the wording COVFEFE after the tweet by the President), https://www.theverge.com/2017/5/31/15717442/donald-trump-covfefe-tweet-twitter (reporting on the widespread internet reaction to the use of the wording COVFEFE), and http://www.news.com.au/world/north-america/twitter-fail-as-world-asks-trump-what-the-hell-does-covfefe-mean/news-story/a336a6109dfdb363681545c8d9a725e1 (reporting on the internet’s widespread use of the term COVFEFE after its use by the President of the United States. Subsequently, the term COVFEFE has be frequently used by third parties as a reference to the President of the United States. See evidence at https://twitter.com/search?q=%23covfefe&src=typd&lang=en (showing a search for COVFEFE on Twitter.com shows individuals the Twitter page for the President, in addition to a wide variety of tweets referencing the President), https://www.instagram.com/explore/tags/covfefe/ (showing that images associated with the wording COVFEFE on the website INSTAGRAM.com are references to The President or individuals associated with him), http://knowyourmeme.com/memes/covfefe (indicating the growth and viralness of references on the internet to the President of the United States with the term COVFEFE), https://www.dailydot.com/unclick/covfefe-memes/ (showing use of the wording COVFEFE in relation to the President of the United States), https://www.google.com/search?q=covfefe+meme&source=lnms&tbm=isch&sa=X&ved=0ahUKEwiEyaf4ss3VAhXD8YMKHQLwCJgQ_AUICigB&biw=1536&bih=832 (showing internet memes using the wording COVFEFE in relation to the President). Moreover, since the mention of the word by the President, the wording has been used in reference to a variety of goods and services by a wide variety of third parties. See evidence at http://www.dailymail.co.uk/news/article-4768314/COVFEFE-license-plates-registered-21-states.html (reporting that 21 states in the United States have issued license plates with the wording COVFEFE), https://www.mcsweeneys.net/articles/the-covfefe-code (posting internet fiction regarding the wording COVFEFE and the breaking of centuries old codes), http://www.businessinsider.com/covfefe-act-president-donald-trump-quigley-twitter-2017-6 (discussing how a congressman has proposed the COVFEFE act), https://www.lookhuman.com/design/341763-covfefe-definition/6010-heathered_black-md?gclid=EAIaIQobChMI-5mH1LTN1QIVD7jACh2tIQCSEAQYASABEgLZI_D_BwE (selling COVFEFE shirts), https://teeducky.com/products/covfefe-t-shirt?variant=38082231824 (selling COVFEFE shirts), https://www.teepublic.com/t-shirts/covefefe (selling a wide variety of COVFEFE shirts designed by different people), https://www.teepublic.com/t-shirts/covefefe (selling a wide variety of COVFEFE shirts), https://www.amazon.com/s?ie=UTF8&node=7141123011&field-brandtextbin=Covfefe+Shirts (selling COVFEFE clothing goods), https://www.google.com/search?q=covfefe+mugs&biw=1536&bih=832&source=univ&tbm=shop&tbo=u&sa=X&ved=0ahUKEwi4u-Xhtc3VAhWLxYMKHbDrAgoQsxgIKQ (selling a variety of mugs with the wording COVFEFE on them), https://www.etsy.com/market/covfefe_mug (showing mugs for sale with the wording COVFEFE on them), https://www.facebook.com/CovfefeCoffee/ (advertising coffee as COVFEFE COFFEE), https://www.drinklings.coffee/products/covfefe-coffee-limited-time (selling COVFEFE coffee), https://me.me/i/the-great-covfefe-blend-extremely-vetted-coffee-beans-raised-with-14782005 (selling The Great COVFEFE Blend of coffee), https://www.shopvesseldrinkware.com/collections/coffee/products/covfefe (selling a COVFEFE blend of coffee), https://untappd.com/b/drake-s-brewing-company-covfefe/2132318 (describing a beer called COVFEFE), https://untappd.com/b/drygate-brewing-co-covfefe-ipa/2121549 (providing a review of COVFEFE IPA beer), https://untappd.com/b/standard-brewing-covfefe/2131406 (reviewing a COVFEFE beer), https://untappd.com/b/shubrew-the-great-covfefe/2148138 (describing a beer called The Great COVFEFE), http://www.cafepress.com/+covfefe_trump_balloon,56582599?utm_medium=cpc&utm_source=pla-google&utm_campaign=696018144-d-c&utm_content=36417350096-adid-157268574618&utm_term=pla-75470947267-pid-56582599 (selling COVFEFE ballons), https://www.amazon.com/Covfefe-Assorted-Beach-Balls/dp/B071ZZPVHV (selling COVFEFE beach balls), https://www.amazon.com/Covfefe-Treat-Boxes-Assorted-Colors/dp/B071WKNC96 (selling COVFEFE lunch boxes), and http://www.cafepress.com/+covfefe+pet-apparel (selling COVFEFE clothing for pets). Because consumers are accustomed to seeing this slogan or term commonly used in everyday speech by many different sources, the public will not perceive the term or slogan as a trademark or service mark that identifies the source of applicant’s goods, but rather only as conveying an informational message.
An applicant may not overcome this refusal by attempting to amend the application to seek registration on the Supplemental Register or to assert a Section 2(f) claim of acquired distinctiveness. TMEP §1202.04; see In re Eagle Crest, Inc., 96 USPQ2d at 1229.
Responding to the Sections 1, 2, 3, and 45 Refusal
SUBSTITUTE SPECIMEN FOR GOODS IN CLASS 25 REQUIRED
A mock-up of a product or its packaging that has been digitally created or otherwise altered to include the mark does not show actual use of the mark in commerce. See 15 U.S.C. §1127; TMEP §§904.04(a), 904.07(a); cf. In re Chica, Inc., 84 USPQ2d 1845, 1848 (TTAB 2007) (holding that “a mere drawing of the goods with an illustration of how the mark may be displayed” was not an acceptable specimen because it did not show actual use in commerce); In re The Signal Cos., 228 USPQ 956, 957-58 n.4 (TTAB 1986) (noting that a printer’s proof of an advertisement would not be an acceptable specimen because it does not show actual use in commerce). In addition, a photograph of the mark on a label, tag, or piece of paper placed on top of applicant’s or a third party’s goods or packaging is generally not acceptable to show applicant’s use of the applied-for mark in commerce. See 15 U.S.C. §1127; TMEP §§904.03(a), 904.07(a). Applicant must show the mark on applicant’s own goods or packaging as it is seen by the purchasing public, with goods that have actually been sold or transported in commerce. See TMEP §904.07(a).
In this case, the specimen provided by the applicant shows the applied-for mark on what appears to be a yellow sticky note with black lines drawn at the top to represent stitching. There is a significant amount of pixilation and blurring around the wording COVFEFE and the wording 100% COTTON LARGE in the specimen and similar pixilation and blurring does not appear around any other elements of the clothing in the image. Moreover, the image of the shirt provided by the applicant appears nearly identical to the image of the shirt provided as a specimen in the applicant’s trademark application for the mark STUPID. See U.S. Registration No. 4738344 and attached specimen from U.S. Registration No. 4738344. The only differences between the specimens is the trademarks and the stylization of the wording. Therefore, it appears that the specimen provided by the applicant in the current application may have been digitally altered.
An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods and/or services identified in the application or amendment to allege use. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a). “Use in commerce” means (1) a bona fide use of the applied-for mark in the ordinary course of trade (and not merely to reserve a right in the mark), (2) the mark is placed in any manner on the goods, packaging, tags or labels, or displays of the goods, and (3) the goods are actually sold or transported in commerce. See 15 U.S.C. §1127.
In addition to the examples of specimens in (2) in the above paragraph, examples of specimens for goods also include instruction manuals, containers, and webpages that include a picture or textual description of the goods associated with the mark and the means to order the goods. See TMEP §§904.03 et seq.
Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(1) Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application and (b) shows the mark in actual use in commerce for the goods and/or services identified in the application. A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.” The substitute specimen cannot be accepted without this statement.
(2) Amend the filing basis to intent to use under Section 1(b), for which no specimen is required. This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.
For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to the Specimen webpage.
INFORMATION ABOUT SPECIMEN REQUIRED
A specimen must show the mark as used in commerce, which means use in the ordinary course of trade (not merely to reserve a right in the mark). 15 U.S.C. §§1051, 1052, 1127. A specimen shows a mark used in commerce for goods only if it shows the mark placed on the goods, packaging, tags or labels affixed to the goods, or displays of the goods, and the goods are actually sold or transported for sale in commerce. 15 U.S.C. §1127. Because the specimen of record appears to be digitally created or altered, or otherwise a mock-up, it does not appear to show the mark as actually used in commerce. Therefore, to permit proper examination of the application, applicant must submit additional information for the record about the specimen and how the mark as shown in the specimen is in use in commerce with applicant’s goods. See 37 C.F.R. §2.61(b); TMEP §814.
Accordingly, applicant must respond to the following questions and requests for documentation to satisfy this request for information:
(1) How are applicant’s goods sold? Specify the retail, wholesale, or other sales environment in which the goods are sold.
(2) Please provide copies of invoices, bills of sale, or other documentation of sales of the goods.
(3) Was the specimen created for submission with this application?
(4) Does the specimen show applicant’s product as it is currently being sold to consumers?
(5) How do applicant’s goods appear in the actual sales environment? If sold in stores, provide photos showing the goods for sale in the stores. If sold online, identify the websites and provide copies of the webpages showing the goods for sale. And if sold in another type of sales environment, provide photos and/or documentation showing the goods for sale in that environment.
(6) If the information in question (5) about how the goods appear in the actual sales environment is not available to applicant, then please describe how applicant’s goods are transported for sale and provide photos and other documentation showing how applicant’s mark appears on the goods and/or its packaging when the goods are being transported for sale.
See 37 C.F.R. §2.61(b); TMEP §814.
Failure to comply with a request for information is grounds for refusing registration. In re AOP LLC, 107 USPQ2d 1644, 1651 (TTAB 2013) (citing In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701-02 (TTAB 2003); TMEP §814). Merely stating that information is available on applicant’s website is an insufficient response and will not make the relevant information of record. See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).
RESPONSE GUIDELINES
For this application to proceed further, applicant must explicitly address each refusal and requirement raised in this Office action. If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register. Applicant may also have other options specified in this Office action for responding to a refusal and should consider those options carefully. To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements. For more information and general tips on responding to USPTO Office actions, response options, and how to file a response online, see “Responding to Office Actions” on the USPTO’s website.
If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end and the trademark will fail to register. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a); TMEP §§718.01, 718.02. Additionally, the USPTO will not refund the application filing fee, which is a required processing fee. See 37 C.F.R. §§2.6(a)(1)(i)-(iv), 2.209(a); TMEP §405.04.
When an application has abandoned for failure to respond to an Office action, an applicant may timely file a petition to revive the application, which, if granted, would allow the application to return to active status. See 37 C.F.R. §2.66; TMEP §1714. The petition must be filed within two months of the date of issuance of the notice of abandonment and may be filed online via the Trademark Electronic Application System (TEAS) with a $100 fee. See 37 C.F.R. §§2.6(a)(15)(ii), 2.66(b)(1).
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.
/Mark S. Tratos/
Mark S. Tratos
Trademark Examining Attorney
Law Office 113
(571) 270-3575
Mark.Tratos@uspto.gov
TO RESPOND TO THIS LETTER: Go to http://www.uspto.gov/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.uspto.gov/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.uspto.gov/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.uspto.gov/trademarks/teas/correspondence.jsp.