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:  October 09, 2019

 

TEAS PLUS 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 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 applicants who do not meet these requirements must submit an additional processing fee of $125.  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 applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.  

 

INTRODUCTION

 

The Office has reassigned this application to the undersigned trademark examining attorney.

 

On December 6, 2018, applicant was advised of the pending decision by the Supreme Court of the United States in Iancu v. Brunetti, ___ U.S. ___, 2019 USPQ2d 232043 (2019).  The issue on appeal was whether the scandalous/immoral provision of the trademark statute violates the First Amendment of the Constitution because it impermissibly restricts free speech, as held by the U.S. Court of Appeals for the Federal Circuit.  In re Brunetti, 877 F.3d 1330, 125 USPQ2d 1072 (Fed. Cir. 2017).  Because applicant’s mark would have been subject to refusal under the scandalous/immoral provision, applicant was advised that action on this application would be suspended pending the outcome of the appeal to the Supreme Court.

 

On June 24, 2019, the Supreme Court decided Iancu v. Brunetti, affirming the judgment of the Federal Circuit.  Iancu v. Brunetti, ___ U.S. ___, 2019 USPQ2d 232043.  Accordingly, the scandalous/immoral provision under Section 2(a) is no longer a valid ground on which to refuse registration.  Therefore, registration will not be refused because applicant’s mark consists of or includes matter that is scandalous under Section 2(a).  Nevertheless, applicant’s mark is not entitled to registration for the following reason.  However, the prior-filed application abandoned and no longer poses a bar to registration of the applicant’s mark under Section 2(d) of the Trademark Act based on a likelihood of confusion.

 

SUMMARY OF ISSUES

 

The applicant must address:

 

• Sections 1, 2, 3, and 45 Refusal – Mark Fails to Function as Commonplace Term – NEW ISSUE.

 

SECTIONS 1, 2, 3, AND 45 REFUSAL –

MARK FAILS TO FUCNTION AS COMMONPLACE TERM – NEW ISSUE

 

Registration is refused because the applied-for mark is a term that does not function as a trademark 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.  In this case, the applied-for mark is a commonplace term widely used by a variety of sources that merely conveys an ordinary, familiar, well-recognized concept or sentiment.  See 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 merely as an “everyday, commonplace safety admonition”); In re Remington Prods., Inc., 3 USPQ2d 1714, 1715-16 (TTAB 1987) (holding PROUDLY MADE IN USA not registrable for electric shavers because the mark would be perceived merely as a common message encouraging the purchase of domestic-made products); TMEP §1202.04(b). 

 

Terms that merely convey an informational message are not registrable.  In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229 (TTAB 2010).  Determining whether the term functions as a trademark 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.  “The more commonly a [term] is used, the less likely that the public will use it to identify only one source and the less likely that it will be recognized by purchasers as a trademark.”  In re Hulting, 107 USPQ2d 1175, 1177 (TTAB 2013) (quoting In re Eagle Crest, Inc., 96 USPQ2d at 1229); TMEP §1202.04(b).

 

The attached evidence from Merriam-Webster shows that this term is “used as a pronunciation spelling of nigger” and is “used by some black people to refer to themselves or to another black person in a neutral or positive way.”  https://www.merriam-webster.com/dictionary/nigga.  Additionally, the attached evidence establishes that third parties routinely use this term, or slight variations thereof, on or in connection with the identified goods, namely, clothing.  E.g., https://www.spreadshirt.com/shop/design/nigga+mens+t-shirt-D5c3b0af520517623b054dd79; https://www.teepublic.com/kids-t-shirt/4265198-supreme-nigga; https://shirtboss.com/ethnic-slurs/308-nigger-ethnic-slur-t-shirt.html#/logo-front_only; https://society6.com/product/niggas_long-sleeve-tshirt; https://basicteeshops.com/?product=niggas-in-paris-t-shirt; http://fashionbombdaily.com/issa-raes-insecure-niggas-sweatshirt-fun-offensive/; http://wheretoget.it/link/617082.  Because consumers are accustomed to seeing this term commonly used in everyday speech by many different sources, they would not perceive it as a mark identifying the source of applicant’s goods but rather as only conveying an informational message.

 

An applicant may not overcome this refusal by amending the application to seek registration on the Supplemental Register or asserting a claim of acquired distinctiveness under Section 2(f).  TMEP §1202.04(d); see In re Eagle Crest, Inc., 96 USPQ2d at 1229. 

 

DOMESTIC PRO SE APPLICANT ADVISORY

 

Because of the legal technicalities and strict deadlines of the trademark application process, applicant may wish to hire a private attorney who specializes in trademark matters to assist in the process.  The assigned trademark examining attorney can provide only limited assistance explaining the content of an Office action and the application process.  USPTO staff cannot provide legal advice or statements about an applicant’s legal rights.  TMEP §§705.02, 709.06.  See Hiring a U.S.-licensed trademark attorney for more information.

 

RESPONSE GUIDELINES

 

For this application to proceed, applicant must explicitly address the refusal in this Office action.  For the refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

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(a)(1), (b)(1).

 

Applicant should include the following information on all correspondence with the Office:  (1) the name and law office number of the trademark examining attorney, (2) the serial number and filing date of the application, (3) the date of issuance of this Office action, (4) applicant’s name, address, telephone number and e-mail address (if applicable), and (5) the mark.  37 C.F.R. §2.194(b)(1); TMEP §302.03(a).

 

Applicant should provide a current telephone number with its response to expedite processing.  TMEP §302.03(a).

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be 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  

 

/Kevin G. Crennan/

Trademark Examining Attorney

Law Office 113

(571) 272-7949

kevin.crennan@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.