United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  August 11, 2021

 

 THIS IS A FINAL ACTION.

 

This Office Action is in response to applicant’s communication filed on November 24, 2020.

 

In a previous Office Action(s) dated June 10, 2020, the trademark examining attorney refused registration of the applied-for mark based on the following: 

 

-          Trademark Act Sections 1, 2, 3, and 45 – Failure to Function as a Trademark;

 

In addition, applicant was required to satisfy the following:  Provide additional information about the applied for mark.

 

Based on applicant’s response, applicant has satisfied the following: Request for information.  See TMEP §§713.02, 714.04.

 

The trademark examining attorney maintains and now makes FINAL the refusal(s) in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

• Failure to Function in International Class 9

 

Registration is refused because the applied-for mark is a slogan or term that does not function as a trademark or service mark to indicate the source of applicant’s goods and/or services 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, message, or expression widely used by a variety of sources that merely conveys an ordinary, familiar, well-recognized concept or sentiment.  See In re Wal-Mart Stores, Inc., 129 USPQ2d 1148, 1160 (TTAB 2019) (holding INVESTING IN AMERICAN JOBS not registrable for retail store services or promoting public awareness of goods made or assembled by American workers because the mark would be perceived merely as a commonly-used informational message); 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”). 

 

Terms and expressions that merely convey an informational message are not registrable.  In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229 (TTAB 2010).  Determining whether the term or expression functions as a trademark or service mark depends on how it would be perceived by the relevant public.  In re Wal-Mart Stores, Inc., 129 USPQ2d at 1150 (citing D.C. One Wholesaler, Inc. v. Chien, 120 USPQ2d 1710, 1713 (TTAB 2016)); In re Eagle Crest, Inc., 96 USPQ2d at 1229; TMEP §1202.04.  “The more commonly a [term or expression] 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 [or service mark].”  In re Hulting, 107 USPQ2d 1175, 1177 (TTAB 2013) (quoting In re Eagle Crest, Inc., 96 USPQ2d at 1229); TMEP §1202.04(b).

 

The filed Letter of Protest and previously attached evidence from www.etsy.com, www.bustedtees.com, www.amazon.com, www.eventbrite.com, www.fightorquit.com, www.timeout.com, www.ticketfly.com, www.shop-beautique.com, asherandgraydesigns.com,  and www.teepublic.com shows that this term or expression is commonly used as a motivational phrase conveying confidence.  Furthermore, the prior attached evidence from www.urbandictionary.com indicated that the applied for mark is slang for “A woman whom everyone wants to be.”

 

Because consumers are accustomed to seeing this term or expression commonly used in everyday speech by many different sources, they would not perceive it as a mark identifying the source of applicant’s goods and/or services but rather as only conveying an informational message. In re Hulting, 107 USPQ2d 1175, 1177 (TTAB 2013); TMEP §1202.04(b).

 

In response, applicant asserts 100% THAT BITCH has been established as a source identifier of the applicant based on prior registrations of unrelated goods and services and the popularity of a song by applicant containing the phrase.  However, these arguments are not persuasive to establish that the phrase 100% THAT BITCH is source indicating for various articles of clothing.(emphasis added).  Thus, as previously shown, and shown by the attached evidence from the following webpages, consumers are accustomed to seeing this term or expression commonly used in everyday speech by many different sources, and they would not perceive it as a mark identifying the source of applicant’s services but rather as only conveying a popular informational message:

 

-          https://lmclothings.com/p/product/100-that-bitch/

-          https://vensestore.com/products/100-that-bitch-funny-meme-censored-bitchy-friend-great-gift-t-shirt/SP909371-4478424678444

-          https://www.graphicfans.com/products/100-that-bitch-pullover-hoodie-7tcwvr1w

-          https://funny-store-57.creator-spring.com/listing/100-that-bitch-yf9-t239?product=95

-          https://celayoastore.com/product/1078428-womens-100-that-bitch-flowy-tank

-          https://dreameris.com/products/100-that-bitch-premium-t-shirt-148

-          https://dilysboutiquee.com/product/100-that-bitch-karamo-brown-t-shirt-bvzz-B0BBau

-          https://medusaskates.com/100-that-bitch-socks/

-          https://longwinterfarm.com/products/100-that-bitch-lip-balm

-          https://lockwoodshop.com/products/100-that-bitch-keychain

-          https://citizenruth.com/product/100-that-bitch-bamboo-wall-art-dark-front/

-          https://dearollie.com/product/100-that-bitch-cat-sticker/

-          https://www.hats4uusa.com/dad-hats/100-that-bitch-dad-hat

 

 

Accordingly, the consuming public is used to encountering the phrase 100% THAT BITCH, as both ornamental matter on a wide variety of goods, including clothing items, and as a commonly-used, often humourous phrase, to convey self-confidence. Further, a trademark owner who fails to exercise sufficient control over licensees or franchisees may be found to have abandoned its rights in the mark. See Hurricane Fence Co. v. A-1 Hurricane Fence Co., 468 F. Supp. 975, 986; 208 USPQ 314, 325 (S.D. Ala. 1979).

 

Next, applicant noted applicant’s copyright in the music and related lyrics of the popular song “Truth Hurts” and provided evidence relating to the efforts to restrict use of the phrase 100% THAT BITCH in relation to clothing on various webpages.  However, this evidence is not persuasive because the relevant portion of the song is the entire phrase, “I just took a DNA test, turns out I’m 100% that bitch.” (see www.genius.com).

 

Further, the attached evidence from www.cosmopolitan.com and www.vulture.com establishes there is controversy surrounding the origins of that lyric.  In fact, Lizzo®, the artist affiliated with the applied for mark and owner of the above referenced copyright, stated that the lyrics originated after seeing an internet meme containing the phrase, which “made me feel like 100% that bitch.”  Accordingly, the popularity of the term 100% THAT BITCH pre-dates applicant and is an expression consumers have been accustomed to seeing in everyday speech.

 

Thus, the arguments show that applicant’s mark fails to function because it constitutes a commonly used expression widely used in the marketplace and therefore, would not indicate the source of the applicant’s goods and distinguish them from those of others.  Accordingly, this refusal is made FINAL.

 

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).

 

RESPONSE GUIDELINES

 

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

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are 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 request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

 

Mark Peisecki

/Mark Peisecki/

Trademark Examining Attorney Law Office 105

(571) 270-5399

mark.peisecki@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.