United States Patent and Trademark Office (USPTO)

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

 

 

 

REQUEST FOR RECONSIDERATION

AFTER FINAL ACTION

DENIED

 

 

Issue date:  April 12, 2022

 

 

The applicant requested and was granted remand for the Examining Attorney to consider additional evidence in the nature of an “Expert Declaration,” which the applicant asserts was not previously available because it was obtained well after the date the applicant filed the notice of appeal.  Applicant’s Request for Remand, 2/11/2022, at 1-3 (citing Target Brands Inc. v. Hughes, 85 USPQ2d 1676, 1681 (TTAB 2007) (“Acquired distinctiveness and buyer recognition is to be tested in an opposition proceeding as of the date the issue is under consideration. The filing date is not a cutoff for any evidence developing after that time. Evidence of sales and advertising after the filing date of the application will be considered.”) (emphasis added)).

 

Applicant’s request for reconsideration is denied.  See 37 C.F.R. §2.63(b)(3).  The trademark examining attorney has carefully reviewed applicant’s request and determined the request did not:  (1) raise a new issue, (2) resolve all the outstanding issue(s), (3) provide any new or compelling evidence with regard to the outstanding issue(s), or (4) present analysis and arguments that were persuasive or shed new light on the outstanding issue(s).  TMEP §§715.03(a)(ii)(B), 715.04(a). 

 

Registration was previously refused under Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1), because the subject matter for which registration is sought is merely descriptive of the identified services. 

 

The examining attorney has considered the applicant’s arguments carefully but has found them unpersuasive.  The applicant’s arguments and evidence are similar to that provided in the applicant’s previous response and discussed in the Final Office action.  The examples of use of cat in the context of “black cat” and “big cat,” are not analogous to the use of CAT in the applicant’s mark, which is not preceded by an adjective.  As noted in the Final Office action, descriptiveness is considered in relation to the relevant services.  DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012).  “That a term may have other meanings in different contexts is not controlling.” Robinson v. Hot Grabba Leaf, LLC, 2019 USPQ2d 149089, at *5 (TTAB 2019) (citing In re Canine Caviar Pet Foods, Inc., 126 USPQ2d 1590, 1598 (TTAB 2018)); TMEP §1209.03(e).  “It is well settled that so long as any one of the meanings of a term is descriptive, the term may be considered to be merely descriptive.”  In re Mueller Sports Med., Inc., 126 USPQ2d 1584, 1590 (TTAB 2018) (quoting In re Chopper Indus., 222 USPQ 258, 259 (TTAB 1984)).  CAT is a commonly used abbreviation for catalytic converters and the applicant’s services relate to catalytic converters and more specifically they relate to security devices used to protect catalytic converters from theft as demonstrated by the recitation of services and the evidence previously and presently made of record.  The final refusal based on mere descriptiveness is maintained and CONTINUED.

 

Accordingly, the following requirement(s) and/or refusal(s) made final in the Office action dated April 27, 20021 are maintained and continued and hereby attaches additional internet evidence: 

 

• The Section 2(e)(1) final refusal based on mere descriptiveness is maintained and CONTINUED.

 

See TMEP §§715.03(a)(ii)(B), 715.04(a).                                                                                                                                                                                                                                                                                                                                              

 

As a preliminary matter, although the applicant requested remand based solely on the expert declaration, the applicant has also included news articles as evidence.  Applicant’s Request for Remand, 2/11/2022, Exhibit III.  This evidence was previously available to the applicant as it is dated before the applicant’s Request for Reconsideration, and was made of record by attachment to that filing.  Applicant’s Request for Reconsideration, 10/12/2021, TSDR, at 17-31.  The Board discourages the submission of duplicate copies of evidence because “it needlessly increases the size of the record, and makes review of the record more difficult.”  In re Six Continents Limited, Serial Nos. 88430142 and 88430162, 2022 TTAB LEXIS 35, slip op. at 3 (February 7, 2022).  Nonetheless, the Examining Attorney waives any objection as to the inclusion and discussion of this duplicate evidence and addresses the applicant’s arguments regarding this evidence below.

 

The applicant asserts that TMEP §401.03 n.2 “instructs that additional weight is granted for criticisms that are confirmed by a qualified expert.”  Applicant’s Request for Remand, 2/11/2022, at 3, Response C, 2/11/2022, at 2.  TMEP §401.03 does not include any notes and relates to the creation of application records:

 

The USPTO maintains an electronic record for each application that contains all documents comprising the official administrative record. See TMEP §402; see generally 5 U.S.C. §§556, 557, 706; 15 U.S.C. §1071(a)(4).

 

It appears that the applicant intended to cite to TBMP §401.03 n.2, which does involve expert disclosures.  However, this section of the TBMP involves discovery for inter partes actions, not ex parte appeals as in this case, and the case in the note that the applicant appears to rely on relates to using experts in relation to survey evidence:

 

McDonald’s Corp. v. McSweet, LLC, 112 USPQ2d 1268, 1298 n.58 (TTAB 2014) ("While a party is not required to employ an expert to be able to direct criticisms to an opposing party’s survey, having a qualified expert confirm that the criticisms reflect the relevant standards employed in the survey field would lend additional weight to such criticisms.");

 

No survey has been conducted in this case, and the applicant’s expert declaration does not discuss any survey evidence.  Thus, the weight given to qualified survey experts’ criticisms of surveys does not apply to the applicant’s declaration.  Further, it is well settled that the opinions of experts (as opposed to factual matters within their area of expertise) cannot substitute for the Board’s ultimate decision on descriptiveness, and thus are of virtually no probative value.  Anheuser-Busch, Inc. v. Holt, 92 USPQ2d 1101, 1106 (TTAB 2009) (citations omitted).

 

Further, the declaration provided by the applicant’s expert includes statements such as “The typical consumer [for automotive catalytic converter anti-theft devices] would not use the name CAT SECURITY to generally refer to automotive catalytic converter anti-theft devices,” and “A pertinent consumer would not refer to a catalytic converter anti-theft shield as a CAT SECURITY.”  Expert Declaration, 2/11/2022, at 3-4, 7.  These statements appear to be assertions that the mark is not generic for the specified devices.  However, this application includes information relating to these devices, not the devices themselves, and the mark has not been refused as generic for the information services.  For a descriptiveness refusal, as in this case, the issue is not whether consumers would use the specific term to refer to the relevant goods and/or services, but “whether someone who knows what the goods and[/or] services are will understand the term to convey information about them.”  DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012) (quoting In re Tower Tech, Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002)); In re Mueller Sports. Med., Inc., 126 USPQ2d 1584, 1587 (TTAB 2018); accord Response C, 2/11/2022, TSDR, at 3.

 

Further, the expert’s statement that “the typical-consumer [would not] understand the terms CAT and SECURITY to describe any specific quality, characteristic, or feature of a catalytic converter anti-theft devices,” Expert Declaration, 2/11/2022, at 3, 7, appears to only be supported by assertions that consumers would not use these terms to refer to the relevant goods, which does not appear to be sufficient support for what consumers would understand these terms to convey.  See Expert Declaration, 2/11/2022, at 3-4.

 

Additionally, the declaration asserts that the expert would not “guess[] that the product is a device for catalytic converters” from the term SECURITY.  Expert Declaration, 2/11/2022, at 4, cited in Response C, 2/11/2022, at 8.  According to the applicant’s expert “CAT SECURITY the name does not tell me what the product is, what the product does, or how the product does it.  Expert Declaration, 2/11/2022, at 5. However, it is well settled that “[w]hether consumers could guess what the product [or service] is from consideration of the mark alone is not the test.”  In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985). 

 

The applicant’ expert asserts that the typical consumer for the parts about which the applicant provides its information is a person who has experienced a catalytic converter theft, and the expert asserts that the applicant’s information is also directed to this type of consumer.  Expert Declaration, 2/11/2022, at 3, 6-7.  The applicant concurs with this characterization of its typical consumer.  Response C, 2/11/2022, at 5.  The applicant then references two articles, attached to the Request for Remand, and previously made of record, as discussed above, which the applicant asserts show that consumers would not understand CAT as an abbreviation for catalytic converter.  Id.  However, as acknowledged by the applicant, this evidence consists of only two articles. It is also contradicted by other evidence in the record, including evidence made of record by the applicant, showing use of CAT as an abbreviation for catalytic converter.  The applicant is referred to the Final Office action for a summary of this evidence.  Further, these articles are intended to warn vehicle owners about thefts of catalytic converters, and thus, are not directed to consumers who have already experienced such thefts, the consumers the applicant asserts are its typical consumers, and thus, these articles do not show what meaning such consumers would attribute to the terms in the mark.

 

The applicant’s argument cites to In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) , which as the applicant acknowledges is well known for setting forth the factors for Section 2(d) Refusals, not Section 2(e)(1) Refusals.  See Response C, 2/11/2022, at 7.  Thus, its criteria for distinguishing between two sources of goods/services is not applicable to the refusal in this case.  Further, the applicant’s assertion that its consumers are “sophisticated purchasers” of the type considered in one of the du Pont factors contradicts the applicant’s assertions elsewhere that they are “a subsection of the general public without an automotive background.”  Compare Response C, 2/11/2022, at 7 with Response C, 2/11/2022, at 6, 7.

 

The applicant has argued that the Examining Attorney improperly dissected the mark and did not consider additional incongruous meanings.  Response C, 2/122/2022, at 8-9.  However, the refusal was based on the composite meaning of CAT SECURITY for auto parts for securing catalytic converters, and information relating thereto, and the applicant’s proffered incongruous meaning requires improperly viewing the mark in the abstract.

 

 

If applicant has already filed an appeal with the Trademark Trial and Appeal Board, the Board will be notified to resume the appeal.  See TMEP §715.04(a).

 

If applicant has not filed an appeal and time remains in the six-month response period, applicant has the remainder of that time to (1) file another request for reconsideration that complies with and/or overcomes any outstanding final requirement(s) and/or refusal(s), and/or (2) file a notice of appeal to the Board.  TMEP §715.03(a)(ii)(B).  Filing a request for reconsideration does not stay or extend the time for filing an appeal.  37 C.F.R. §2.63(b)(3); see TMEP §715.03(c). 

 

 

/Sharon A. Meier/

Trademark Attorney, LO 112

571-272-9195 - phone

sharon.meier1@uspto.gov