UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

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.

 

ISSUE/MAILING DATE: 4/29/2016

 

THIS IS A FINAL ACTION.

 

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 $50 per international 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 without incurring this additional fee. 

 

This letter responds to the applicant’s communication filed on March 9, 2016. The applicant (1) argued against the refusal under Trademark Act Sections 1, 2, 3 and 45, (2) amended the identification and classification of services, (3) argued against the requirement that the applicant submit a substitute specimen for International Class 042 or amend the filing basis to Section 1(b), (4) amended the filing basis for International Class 045 to Section 1(b), and (5) provided information about the applicant’s services.

 

The trademark examining attorney notes that the following requirements have been satisfied: (1) Identification and Classification of Services; (2) Applicant Must Submit a Substitute Specimen for Each Class or Amend the Filing Basis to Section 1(b) – Current Specimens Do Not Show the Mark Used in Connection With the Identified Services; (3) Information About Services.  See TMEP §§713.02, 714.04. 

 

For the reasons set forth below, the refusal is now made FINAL under Trademark Act Sections 1, 2, 3, and 45 for failure to function as a service mark.  See 15 U.S.C. §§1051-1053, 1127; 37 C.F.R. §2.63(b). 

Refusal: Failure to Function as a Service Mark

THIS REFUSAL APPLIES TO BOTH CLASSES.

Registration was refused because the applied-for mark does not function as a service mark to identify and distinguish applicant’s services from those of others and to indicate the source of applicant’s services.  Trademark Act Sections 1, 2, 3 and 45, 15 U.S.C. §§1051-1053, 1127; see In re Moody’s Investors Serv., Inc., 13 USPQ2d 2043 (TTAB 1989); In re The Signal Cos., 228 USPQ 956 (TTAB 1986); In re Hughes Aircraft Co., 222 USPQ 263 (TTAB 1984); TMEP §§904.07(b), 1301.02 et seq.

 

The examining attorney has considered the applicant’s arguments carefully but has found them unpersuasive. For the reasons below, the refusal to register the mark under Trademark Act Sections 1, 2, 3 and 45 is maintained and is now made FINAL.

 

The relevant evidence of record is reviewed to determine whether an applied-for mark is being used as a service mark.  In re Volvo Cars of N. Am., Inc., 46 USPQ2d 1455, 1458 (TTAB 1998).  Not every word, design, symbol or slogan used in the advertising or performance of services functions as a mark, even though it may have been adopted with the intent to do so.  See TMEP §1301.02.  A designation cannot be registered unless purchasers would be likely to regard it as a source-indicator for the services.  Id.; see In re Moody’s Investors Serv. Inc., 13 USPQ2d 2043, 2047-49 (TTAB 1989).

 

The applied-for mark does not function as a service mark because it is a generic top-level domain (gTLD). The attached evidence from Wikipedia shows that a top-level domain (TLD) is “one of the domains at the highest level in the hierarchical Domain Name System of the Internet. The top-level domain names are installed in the root zone of the name space. For all domains in lower levels, it is the last part of the domain name, that is, the last label of a fully qualified domain name.” Further, the attached evidence from About.com shows that generic top-level domains (gTLDs) are “…top-level domains that are not related to a specific country. There are dozens of gTLDs for various purposes.”

The attached evidence from ICANNWiki and other Internet websites shows that .SUCKS is a gTLD that is part of ICANN's New gTLD Program and that the applicant is the registry and manager of the gTLD. See the attached evidence. The examining attorney has also attached numerous Internet websites where consumers can register domain names with the TLD .SUCKS. See the attached evidence. Finally, the examining attorney has attached evidence from the applicant’s website showing that the wording .SUCKS is used to merely identify a top-level domain and that consumers can register for domain names with the top-level domain .SUCKS. See the attached evidence.

 

Material obtained from the Internet is generally accepted as competent evidence.  See In re Nieves & Nieves LLC, 113 USPQ2d 1639, 1644-47 (TTAB 2015) (accepting Internet evidence to show false suggestion of a connection and that a name identified a particular living individual whose written consent to register was required); In re Jonathan Drew Inc., 97 USPQ2d 1640, 1641-42 (TTAB 2011) (accepting Internet evidence to show geographic location was well-known for particular goods); In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-03 (TTAB 2009) (accepting Internet evidence to show relatedness of goods in a likelihood of confusion determination); In re Leonhardt, 109 USPQ2d 2091, 2098 (TTAB 2008) (accepting Internet evidence to show descriptiveness); In re Rodale Inc., 80 USPQ2d 1696, 1700 (TTAB 2006) (accepting Internet evidence to show genericness); In re Joint-Stock Co. “Baik”, 80 USPQ2d 1305, 1308-09 (TTAB 2006) (accepting Internet evidence to show geographic significance); In re Gregory, 70 USPQ2d 1792, 1793, 1795 (TTAB 2004) (accepting Internet evidence to show surname significance); TBMP §1208.03; TMEP §710.01(b).

 

The Internet has become integral to daily life in the United States, with Census Bureau data showing approximately three-quarters of American households used the Internet in 2013 to engage in personal communications, to obtain news, information, and entertainment, and to do banking and shopping.  See In re Nieves & Nieves LLC, 113 USPQ2d at 1642 (taking judicial notice of the following two official government publications:  (1) Thom File & Camille Ryan, U.S. Census Bureau, Am. Cmty. Survey Reports ACS-28, Computer & Internet Use in the United States:  2013 (2014), available at http://www.census.gov/content/dam/Census/library/publications/2014/acs/acs-28.pdf, and (2) The Nat’l Telecomms. & Info. Admin. & Econ. & Statistics Admin., Exploring the Digital Nation:  America’s Emerging Online Experience (2013), available at http://www.ntia.doc.gov/files/ntia/publications/exploring_the_digital_nation_-_americas_emerging_online_experience.pdf).  Thus, the widespread use of the Internet in the United States suggests that Internet evidence may be probative of public perception in trademark examination.

The applicant is providing domain name registry operator services and domain name registration services related to the generic top-level domain .SUCKS. Thus, consumers viewing the applied-for mark in connection with the identified services will view it merely as a generic top-level domain name in the same way consumers now view gTLDs such as .COM, .ORG, and .NET.

The Federal Circuit has held that a TLD generally serves no source-indicating function, See In re Oppedahl & Larson LLP, 373 F.3d at 1177, 71 USPQ2d at 1374; see also In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1422 (Fed. Cir. 2005); TMEP §§1209.03(m), 1215.04.

Therefore, the applicant’s mark fails to function as a service mark because it will be perceived as merely a generic top-level domain name and not as an identifier of the source of the identified services.

The applicant argues that the applied-for mark functions as a service mark because it was a service mark before it was a gTLD. However, assuming this is true, it is irrelevant to the case at hand. The applicant is currently using .SUCKS as a top-level domain and is holding this wording out to consumers as wording that identifies a new gTLD. Further, given ICANN’s new gTLD program, consumers now view terms such as the applicant’s as a top-level domain, particularly when used in connection with domain name related services such as domain name registry operator services and domain name registration services.

The applicant also argues that the applied-for mark functions as a service mark because it is being used on the applicant’s website in a manner that functions as a service mark. As noted above, the specimen of record, along with any other relevant evidence of record, is reviewed to determine whether an applied-for mark is being used as a service mark.  In re Volvo Cars of N. Am., Inc., 46 USPQ2d 1455, 1458 (TTAB 1998).  Not every word, design, symbol or slogan used in the advertising or performance of services functions as a mark, even though it may have been adopted with the intent to do so.  See TMEP §1301.02.  A designation cannot be registered unless purchasers would be likely to regard it as a source-indicator for the services.  Id.; see In re Moody’s Investors Serv. Inc., 13 USPQ2d 2043, 2047-49 (TTAB 1989). Here, while the applicant may use the wording .SUCKS at the top of their website and in a way that would commonly be seen as service mark usage, purchasers would not be likely to regard it as a source-indicator for the services because it is merely a top-level domain, which the Court of Appeals for the Federal Circuit has held has no source-indicating function to consumers. Thus, the applied-for mark does not function as a service mark to identify the source of the identified services.

Conclusion

The applicant’s mark must be refused registration under Trademark Act Sections 1, 2, 3, and 45 because the applied-for mark is a generic top-level domain name and does not function as an identifier of the source of the identified services. Furthermore, the applicant has failed to show that the mark functions as a service mark for the identified services and would not be perceived merely as a generic top-level domain. As such, the refusal to register the mark under Trademark Act Sections 1, 2, 3, and 45 is maintained and is now made FINAL.

Response Guidelines

Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond by providing one or both of the following:

 

(1)        A response that fully satisfies all outstanding requirements and/or resolves all outstanding refusals.

 

(2)        An appeal to the Trademark Trial and Appeal Board, with the appeal fee of $100 per class.

 

37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.

 

In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues.  TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

 

/Seth A. Rappaport/

Seth A. Rappaport

Senior Trademark Attorney

Law Office 104

Phone: (571) 270-1508

Fax: (571) 270-2508

email: seth.rappaport@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.