UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
| U.S. APPLICATION SERIAL NO. 87877118 MARK: VIRGINITY ROCKS | |
| CORRESPONDENT ADDRESS: | CLICK HERE TO RESPOND TO THIS LETTER: http://www.uspto.gov/trademarks/teas/response_forms.jsp |
| APPLICANT: Gary Winthorpe Enterprises LLC | |
| 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: 8/6/2018
The referenced application has been reviewed by the assigned trademark examining attorney.
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).
Applicant must respond timely and completely to the issue below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
REFUSAL UNDER SECTIONS 1, 2, 3, AND 45:
MARK IS A COMMONPLACE SLOGAN AND FAILS TO FUNCTION
Registration is refused because the applied-for mark is a slogan or 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 an informational social message that merely conveys support of, disdain for, or affiliation with the ideals conveyed by the message. See In re Hulting, 107 USPQ2d 1175, 1177-79 (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 merely as a commonly used political message); D.C. One Wholesaler, Inc., 120 USPQ2d at 1716 (noting that "the marketplace is awash in products that display the term I ♥ DC as a prominent ornamental feature of such goods, in such a way that the display itself is an important component of the product and customers purchase the product precisely because it is ornamented with a display of the term in an informational manner, not associated with a particular source"). TMEP §1202.04(b).
Terms and phrases that merely convey an informational message are not registrable. See In re Eagle Crest, Inc., 96 USPQ2d at 1229. Determining whether a term or phrase 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. “The more commonly a [term or phrase] 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 at 1177 (quoting In re Eagle Crest, Inc., 96 USPQ2d at 1229); TMEP §1202.04(b).
Here, the applicant has applied for the phrase “VIRGINITY ROCKS” for use in connection with hoodies, t-shirts, condoms, and greeting cards. The wording “virginity” refers to the “state of never having had sexual intercourse,” while the wording “rocks” is slang for “to be extremely enjoyable, pleasing.” See attached dictionary evidence. In toto, the wording suggests that the state of never having had sex is enjoyable.
Indeed, the attached evidence from the following sources shows that this term or phrase has become a widely used message that conveys either support of virginity and is in jest thereof:
All of these different sources are selling apparel goods where the mark is used in essentially the same fashion as it is by the applicant on its apparel. Evidence from www.sheknows.com, www.13newsnow.com, and www.nrtoday.com further shows that apparel featuring this particular slogan has been newsworthy. Notably, the apparel shown apparently came from different sources, including the applicant. Moreover, the article from www.nrtoday.com highlights the pervasiveness of the message: “Initially, similar shirts were promoting Christian values, but through social media they morphed into a promotion of the opposite.” In short, the phrase “VIRGINITY ROCKS” is far from virgin material on apparel in commerce.
Further, the attached evidence from the applicant’s website indicates that the phrase “VIRGINITY ROCKS” is used as a slogan on the goods, rather than as an indicator of source, which would be perceived as DANNY DUNCAN. The manner in which the mark is used in the specimen of record also shows that it would be perceived merely as a commonplace slogan. For example, the mark is displayed prominently and in large font in the center front of the t-shirt and the condom, in an ornamental fashion. The use of the phrase in the identification of goods to the right of the goods merely identifies the item type or theme (e.g., Virginity Rocks Heather Grey). This perception is buttressed by the fact that other goods on the website are also identified using the same naming convention (e.g., goods bearing the “NO CLOUT” slogan on a hooded sweatshirt on applicant’s webpage are identified as No Clout Hoodie Light Blue, merely identifying product type or theme.) Similarly, the proposed mark as used in connection with the greeting card appears to identify the theme of the card versus the source of the card. The attached evidence from www.dannyduncan69.com shows that the remainder of the cards on the website, sold as a pack, are also called using their themes (e.g., Daddy, I think its fine, Private). All of these, including VIRGINITY ROCKS, would be perceived as the theme of the specific themed card, rather than the source of the goods.
In sum, because consumers are accustomed to seeing this message used in ordinary language by many different sources, they would not perceive it as a mark that identifies the source of applicant’s goods but rather only as conveying an informational message. Evidence consisting of applicant’s actual use of the proposed mark in connection with its goods supports this conclusion.
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. Nor will submitting a substitute specimen overcome this refusal. See TMEP §1202.04(d).
ASSISTANCE
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.
/Valeriya Painter/
Examining Attorney
Law Office 121
(571) 270-7132
valeriya.sherman@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.