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.  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:4/24/2017

 

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.

 

SUMMARY OF ISSUES:

 

• Refusal under Sections 1, 2, and 45 – Informational Slogans
• Supplemental/2F Ineligible – advisory
• Ornamental refusal – possible refusal – advisory
• Trademark Counsel Suggested

 

SEARCH OF OFFICE’S DATABASE OF MARKS

 

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

REFUSAL UNDER SECTIONS 1, 2, AND 45 - INFORMATIONAL SLOGAN

 

Applicant has applied to register the mark NEVERTHELESS, SHE PERSISTED in connection with “Pants; Shirts; Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms; Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms; Triathlon clothing, namely, triathlon tights, triathlon shorts, triathlon singlets, triathlon shirts, triathlon suits” in International Class 25. 

 

Registration is refused because the applied-for mark NEVERTHELESS, SHE PERSISTED 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, 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. 

 

A “trademark” is a word, name, symbol, or device, or any combination thereof used by a manufacturer or merchant to identify their goods and distinguish them from goods manufactured or sold by others, and to indicate the source of manufacturer’s or merchant’s goods.  15 U.S.C. §1127; TMEP §1202.   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 from various Internet websites shows that the slogan NEVERTHELESS, SHE PERSISTED is commonly used to refer to rallies, protests, or movements dedicated to raising awareness of civil rights, protesting violence, and conveying the message of support for the same.  See, for example, the attachments herein including:

 

·       Article from The Hill indicating the hashtag #SHEPERSISTED derives from a quote by Senator Mitch McConnell: “She was warned. She was given an explanation.  Nevertheless, she persisted.”  His turn of phrase was then turned into a “rallying cry” on social media used as a message of support for Senator Elizabeth Warren.

·       Article from USA TODAY discussing the origin of “Nevertheless, She Persisted” as “a feminist social media rallying cry” in support of Senator Warren.

·       Article from Slate indicating the phrase “Nevertheless, she persisted” had emerged as a “pith[y] encapsulation of nearly every struggle for justice.” 

·       Article from Know Your Meme defining #SHEPERSISTED as “a hashtag used by liberals and feminists to support Senator Elizabeth Warren,” and further crediting the origin of the phrase “Nevertheless, she persisted” to the above-mentioned quote from Mitch McConnell

 

The crucial factor to consider is public perception of the wording “Nevertheless, she persisted.” Because consumers are likely to have seen this phrase commonly used by many different sources, the public will not perceive the slogan as a trademark that identifies the source of applicant’s goods, but rather only as conveying an informational message: that the consumer or purchaser supports the ideas and messages conveyed by rallies and organizations dedicated to advancing women’s rights. Furthermore, as the attachments confirm, the phrase is commonly used as an expression of support by many third parties and thus would not be viewed as an indicator of source in applicant alone.

 

As explained in In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229-31 (TTAB 2010) in its review of the trademark capability of the phrase ONCE A MARINE, ALWAYS A MARINE:

 

Because consumers would be accustomed to seeing this phrase displayed on clothing items from many different sources, they could not view the slogan as a trademark indicating source of the clothing only in applicant. It is clear that clothing imprinted with this slogan will be purchased by consumers for the message it conveys. Applicant is not entitled to appropriate the slogan to itself and thereby attempt to prevent competitors from using it to promote the sale of their own goods.

 

The evidence attached from various merchandise vendors confirms that a wide variety of clothing items with variations of the phrase “Nevertheless, She Persisted” are offered by many third parties. See evidence from Red Bubble, Etsy and Café Press. The evidence of record confirms that the phrase “Nevertheless, She Persisted” is not only a rallying cry but rather a common phrase used on merchandise associated with protest events rather than as a source indicator in applicant alone.

 

It is clear from the evidence that many consumers want to express their socio-political stance and that wearing clothing with the wording NEVERTHELESS, SHE PERSISTED on it accomplishes that purpose. As used on applicant's goods, the slogan would be viewed as an informational message rather than as a trademark identifying the source of applicant's goods. 

 

In light of the above, registration is refused under Trademark Act Sections 1, 2, and 45 because the applied-for mark NEVERTHELESS, SHE PERSISTED merely conveys a message and does not function as a trademark to indicate the source of applicant’s goods and to identify and distinguish them from others. 

 

SUPPLEMENTAL REGISTER/2F INELIGIBLE – ADVISORY

 

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.

 

ORNAMENTAL MARK - POSSIBLE REFUSAL – ADVISORY

 

Applicant is advised that, upon consideration of an allegation of use, registration may be refused on the ground that the applied-for mark as used on the specimen of record is merely a decorative or ornamental feature of the goods and, thus, 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, and 45, 15 U.S.C. §§1051-1052, 1127; see In re David Crystal, Inc., 296 F.2d 771, 773, 132 USPQ 1, 2 (C.C.P.A. 1961); In re Villeroy & Boch S.A.R.L., 5 USPQ2d 1451, 1454-55 (TTAB 1987); TMEP §§904.07(b), 1202.03 et seq.

 

The following factors are considered when determining whether the public would perceive the applied-for mark as a trademark or merely as a decorative or ornamental feature:  the commercial impression made by the mark on the specimen, any prior registrations of the same mark for other goods and/or services, promotion of the applied-for mark as a trademark, and the practices of the relevant trade.  See In re The Todd Co., 290 F.2d 597, 599-600, 129 USPQ 408, 409-10 (C.C.P.A. 1961); In re Dimitri’s Inc., 9 USPQ2d 1666, 1668 (TTAB 1988); In re Paramount Pictures Corp., 213 USPQ 1111, 1115 (TTAB 1982); In re Jockey Int’l, Inc., 192 USPQ 579, 581-83 (TTAB 1976); TMEP §§1202.03 et seq.  For more information about this refusal, see http://www.uspto.gov/trademarks/law/ornamental.jsp.

 

Note, as discussed above, the applied-for mark appears incapable of functioning as a source-identifier for applicant’s goods.  See In re The Original Red Plate Co., 223 USPQ 836, 839 (TTAB 1984) (holding the wording YOU ARE SPECIAL TODAY used on ceramic plates to have no source-indicating significance for the plates); TMEP §§1202.03 et seq. Under these circumstances, neither an amendment under Trademark Act Section 2(f) nor an amendment to the Supplemental Register can be recommended.  See TMEP §1202.03-.03(a).

 

TRADEMARK COUNSEL SUGGESTED

 

Because of the legal technicalities and strict deadlines involved in the USPTO application process, applicant may wish to hire a private attorney specializing in trademark matters to represent applicant in this process and provide legal advice.  Although the undersigned trademark examining attorney is permitted to help an applicant understand the contents of an Office action as well as the application process in general, no USPTO attorney or staff is permitted to give an applicant legal advice or statements about an applicant’s legal rights.  TMEP §§705.02, 709.06. 

 

For attorney referral information, applicant may consult the American Bar Association’s Consumers’ Guide to Legal Help, an attorney referral service of a state or local bar association, or a local telephone directory.  The USPTO may not assist an applicant in the selection of a private attorney.  37 C.F.R. §2.11.

 

RESPONSE GUIDELINES 

 

For this application to proceed further, applicant must explicitly address each refusal and/or 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).

 

Contacting the Examining Attorney

 

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.

 

To expedite prosecution of the application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.uspto.gov/trademarks/teas/index.jsp.  If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.uspto.gov/trademarks/teas/e_filing_tips.jsp and e-mail technical questions to TEAS@uspto.gov.

 

 

 

 

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.  

 

 

 

/Annie M. Noble/

Examining Attorney

Law Office 109

(571) 272-3272

annie.noble@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.