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Ask Kendell Kelly, Esq Your Own Question
Kendell Kelly, Esq
Kendell Kelly, Esq, Lawyer
Category: Intellectual Property Law
Satisfied Customers: 588
Experience:  Lawyer practicing in all areas of intellectual property, including patents, trademarks, copyrights, trade secrets and new media.
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I continue receive Infringement notices

Customer Question

I continue receive Infringement notices for the use of disclaimed, descriptive words, because these words are Trademarked. This has cost ebay auctions removed and suspension of my website. Part off declaimer copied as shown on the USPTO site: The previously attached evidence demonstrated that the term “XXXXX XXXXX” has become the recognized and commonly used name for XXXX (= the product I make and offer for sale and also the product of the TM owner). Conclusion The requirement that applicant disclaim the wording “XXXXX XXXXX” and “XXXXX XXXXX” is hereby made FINAL. The applicants had to sign the disclaimer to get the trademark go forward for registration which they did. Registration is not made final yet. Applicants own another registration, words only XXXXX XXXXX , which is the second part they use in this new application, for the same product in the same class. They added the first part in this application. If a final Action is made at the USPTO, and the TM holder has signed the disclaimer, should the TM owner not respect that decision? If the registration gets final, would it be an "empty trademark" What can I do to stop these false accusations? I am in the Netherlands, I contacted a lawyer here, but he said, because this all is happening in USA, he advised to ask a lawyer in USA. I hope for an answer and advice. Thank you!


 


I was not sure if I could add real names so I copy and past from the TM office:


 


OFFICE ACTION (Feb. 02, 2006)


RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE.


MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.uspto.gov/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.


Serial Number  78/553324


The trademark examining attorney has reassessed the application in light of the evidence supplied with the granted Letter of Protest.  A copy of the evidence presented in the Letter of Protest and the memorandum that accompanied the evidence are attached.  See TMEP §§1715 et seq. regarding Letters of Protest.


Upon careful consideration of the application in light of this new evidence, the trademark examining attorney has determined that the term “THREAD BEARS” is generic for applicant’s goods, namely, “Collectables in the nature of Bears, Dolls and Animals, all the forgoing jointed and crocheted, sewn, felted and soft sculpted from various fibers and materials.” Therefore, this wording must now be disclaimed. For further explanation, please note the following.


Disclaimer of “THREAD BEARS” required:


Applicant has previously disclaimed the descriptive wording “THREAD TEDS” and “BEARS” apart from the mark.  Applicant must now however disclaim the generic wording “THREAD BEARS” apart from the mark as shown because it is the common name for the applicant’s goods as cited in the application, namely, “Collectables in the nature of Bears, Dolls and Animals, all the forgoing jointed and crocheted, sewn, felted and soft sculpted from various fibers and materials.”  Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a).


The computerized printing format for the Office’s Trademark Official Gazette requires a standardized format for a disclaimer.  TMEP §1213.08(a)(i).  The following is the standard format used by the Office:


No claim is made to the exclusive right to use “THREAD TEDS” and “THREAD BEARS” apart from the mark as shown.


See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).


As a reminder, a “disclaimer” is a written statement that an applicant adds to the application record that states that applicant does not have exclusive rights, separate and apart from the entire mark, to particular wording and/or to a design aspect.  The disclaimed wording remains part of the mark and the appearance of the applied-for mark will not change.


Explanation of Generic Terms


Generic terms are terms that the relevant purchasing public understands primarily as the common or class name for the goods or services.  In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807 (Fed. Cir. 2001); In re American Fertility Society, 188 F.3d 1341, 51 USPQ2d 1832 (Fed. Cir. 1999); In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed. Cir. 1987); H. Marvin Ginn Corp. v. Int'l Ass'n of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986).  Generic terms are by definition incapable of indicating a particular source of the goods or services, and cannot be registered as trademarks; doing so “would grant the owner of the mark a monopoly, since a competitor could not describe his goods as what they are.” In re Merrill Lynch, 828 F.2d at 1569, 4 USPQ2d at 1142.


A two-part test is used to determine whether a designation is generic:


(1) What is the class or genus of goods or services at issue?


(2) Does the relevant public understand the designation primarily to refer to that class or genus of goods or services?


See H. Marvin Ginn Corp. v. International Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986); TMEP §1209.01(c)(i).


Here, the genus of goods at issue is miniature bears made out of thread.  Applicant has already disclaimed the descriptive and/or generic words “THREAD TEDS” and “BEARS.”  Applicant is the owner of the prior U.S. Registration No.(NNN) NNN-NNNNwhere the applicant disclaimed the generic word “BEARS” and claimed acquired distinctiveness under Trademark Act Section 2(f) for the word “THREAD” in order to register the identical goods on the Principal Register.


However, the attached evidence demonstrates that the term “THREAD BEARS” has become the recognized and commonly used name for small, crocheted, sewn, or felted bears, dolls, and animals.  (See evidence attached to Letter of Protest).  As such, the term “THREAD BEARS” has become generic for applicant’s goods. The evidence attached demonstrates the use of the term “THREAD BEARS” for collectable sewn bears used by many individuals and entities as the generic term for these items.  Because the relevant public understands the designation “THREAD BEARS” primarily to refer to that genus of goods that are collectable sewn bears, the term is generic and must be disclaimed apart from the mark.


Please note that although applicant is the owner of the prior U.S. Registration No.(NNN) NNN-NNNNfor “THREAD BEARS,” trademark rights are not static, and eligibility for registration must be determined on the basis of the facts and evidence in the record at the time registration is sought.  In re Morton-Norwich Products, Inc., 671 F.2d 1332, 213 USPQ 9, 18 (C.C.P.A. 1982); In re Thunderbird Products Corp., 406 F.2d 1389, 160 USPQ 730 (C.C.P.A. 1969).  A term that was once arbitrary or suggestive may lose its distinguishing and origin denoting characteristics through use in a descriptive sense over a period of time, and come to be regarded by the purchasing public as nothing more than a descriptive designation.  In re Digital Research, Inc., 4 USPQ2d 1242, 1243 (TTAB 1987); In re International Spike, Inc., 190 USPQ 505, 507 (TTAB 1976).


Disclaimer Explained


Just as applicant was required to disclaim the phrase “THREAD TEDS,” so must applicant now disclaim the unitary phrase “THREAD BEARS.”  A combination of generic terms may result in a unitary designation that is registrable if the juxtaposition of terms is incongruous or evokes a unique commercial impression.  However, if the combination of two or more generic terms is such that each term retains its generic significance, then the combined expression is generic and thus incapable of denoting source. 

Submitted: 4 years ago.
Category: Intellectual Property Law
Expert:  Kendell Kelly, Esq replied 4 years ago.

KKPC :

Hello!! I am happy to assist. Is your issue the use of the Trademarked currently trademarked term "THREAD BEARS" or with a term that includes it?

JACUSTOMER-z4zcxv8e- :

My question is, is it legal to accuse me for infringement on their mark if I use the the descriptive words "thread bears" to describe my product? The trademark examining attorney has determined that the term “THREAD BEARS” is generic for applicant’s goods and the disclaimer for THREAD BEARS is required.

KKPC :

At this time, the accusation would be considered accurate if your products are in the same class as the registered mark. At this time, while the new mark is pending, even though the Examiner has required a disclaimer, the existing rights still exist.

KKPC :

Further, after the action becomes final, it will likely be necessary to proceed with legal action to have the mark be ruled "generic."

KKPC :

The examination of whether this occurred is based on an examination of fact, so if the term has become commonly used in the mind of the consumer to identify a good (which is what the Examiner may be saying), it can be deemed "generic."

KKPC :

Hopefully, this answers all of your questions. If not, do not hesitate to let me know!

KKPC :

______________________

Use of this service does not create an attorney-client relationship. Inasmuch, our conversation is merely informational and should be used to find an attorney licensed in your local area that can further assist you.

JACUSTOMER-z4zcxv8e- :

Do you mean this with "after the action becomes final" ?, This was posted on February 14-2007:

JACUSTOMER-z4zcxv8e- :

OFFICE ACTION

RESPONSE TIME LIMIT: TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE.

MAILING/E-MAILING DATE INFORMATION: If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.uspto.gov/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

Serial Number 78/553324

THIS IS A FINAL ACTION

This FINAL OFFICE ACTION responds to applicant’s communication filed on December 14, 2006 in which the applicant argued against the requirement for the disclaimer of the wording “THREAD BEARS”. The examining attorney has carefully considered the applicant's arguments but has found them unpersuasive. For the reasons below, the requirement for the disclaimer of the wording “THREAD BEARS” is maintained and now made FINAL. 37 C.F.R. §2.64(a).

Disclaimer

Applicant has previously disclaimed the descriptive wording “THREAD TEDS” and “BEARS” apart from the mark. Applicant must now however disclaim the generic wording “THREAD BEARS” apart from the mark as shown because it is the common name for the applicant’s goods as cited in the application, namely, “Collectables in the nature of Bears, Dolls and Animals, all the forgoing jointed and crocheted, sewn, felted and soft sculpted from various fibers and materials.” Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a). Please note, the disclaimed wording remains part of the mark and the appearance of the applied-for mark will not change.

The computerized printing format for the Office’s Trademark Official Gazette requires a standardized format for a disclaimer. TMEP §1213.08(a)(i). The following is the standard format used by the Office:

No claim is made to the exclusive right to use “THREAD TEDS” and “THREAD BEARS” apart from the mark as shown.

See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).

As previously explained, the Office can require an applicant to disclaim an unregistrable part of a mark consisting of particular wording, symbols, numbers, design elements or combinations thereof. 15 U.S.C. §1056(a). Under Section 2(e) of the Trademark Act, the Office can refuse registration of an entire mark if the entire mark is merely descriptive, deceptively misdescriptive, or primarily geographically descriptive of the goods. 15 U.S.C. §1052(e). Thus, the Office may require an applicant to disclaim a portion of a mark that, when used in connection with the goods or services, is merely descriptive, deceptively misdescriptive, primarily geographically descriptive, or otherwise unregistrable (e.g., generic). TMEP §1213.03(a). Failure to comply with a disclaimer requirement can result in a refusal to register the entire mark. TMEP §1213.01(b).

A “disclaimer” is a statement that applicant does not claim exclusive rights to an unregistrable component of a mark. A disclaimer does not affect the appearance of the applied-for mark and does not physically remove the disclaimed matter from the mark, but rather is a written statement that applicant does not claim exclusive rights to the disclaimed wording and/or design separate and apart from the mark as shown in the drawing.

Explanation of Generic Terms

As previously discussed in the February 2, 2006 Office Action, generic terms are terms that the relevant purchasing public understands primarily as the common or class name for the goods or services. In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807 (Fed. Cir. 2001); In re American Fertility Society, 188 F.3d 1341, 51 USPQ2d 1832 (Fed. Cir. 1999); In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed. Cir. 1987); H. Marvin Ginn Corp. v. Int'l Ass'n of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986). Generic terms are by definition incapable of indicating a particular source of the goods or services, and cannot be registered as trademarks; doing so “would grant the owner of the mark a monopoly, since a competitor could not describe his goods as what they are.” In re Merrill Lynch, 828 F.2d at 1569, 4 USPQ2d at 1142.

A two-part test is used to determine whether a designation is generic:

(1) What is the class or genus of goods or services at issue?

(2) Does the relevant public understand the designation primarily to refer to that class or genus of goods or services?

See H. Marvin Ginn Corp. v. International Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986); TMEP §1209.01(c)(i).

Here, the genus of goods at issue is miniature bears made out of thread. Applicant has already disclaimed the descriptive and/or generic words “THREAD TEDS” and “BEARS.” Applicant is the owner of the prior U.S. Registration No. 2146208 where the applicant disclaimed the generic word “BEARS” and claimed acquired distinctiveness under Trademark Act Section 2(f) for the word “THREAD” in order to register the identical goods on the Principal Register.

However, the previously attached evidence demonstrated that the term “THREAD BEARS” has become the recognized and commonly used name for small, crocheted, sewn, or felted bears, dolls, and animals. (See evidence attached to Letter of Protest). In this case, applicant’s goods are known as “THREAD BEARS” in the collectable bear industry. As such, the combination of words is generic and the term “THREAD BEARS” must be disclaimed.

The evidence attached demonstrates the use of the term “THREAD BEARS” for collectable sewn bears used by many individuals and entities as the generic term for these items. As demonstrated by the attached materials obtained from applicant’s website located at www.beadwrangler.com/creature.htm, the word “thread bears” is a commonly used phrase to identify goods such as those sold by applicant. For example, please note the following excerpt:

You will find several websites for thread crocheted bears and patterns. Search the internet using the words "thread bears", "crocheted teddy bears, " "crocheted miniature bears" and you will find many links and web rings.

Although applicant claims that the wording “THREAD BEARS” is not generic, the evidence attached indicates otherwise. Because the relevant public understands the designation “THREAD BEARS” primarily to refer to that genus of goods that are collectable sewn bears, the term is generic and must be disclaimed apart from the mark.

Applicant argues that the generic term for the type of products in question are “crochet, knitted, sewn or needle felted animals.” However, a term that serves as the common descriptor of a key ingredient, characteristic or feature of the goods is also generic and thus incapable of distinguishing source. A term need not relate solely to the name of the goods or services in order to be held incapable of serving as an indicator of origin. A.J. Canfield Co. v. Honickman, 808 F.2d 291, 1 USPQ2d 1364 (3rd Cir. 1986) (CHOCOLATE FUDGE generic for diet sodas); Miller Brewing Co. v G. Heileman Brewing Co., 561 F.2d 75, 80, 195 USPQ 281, 285 (7th Cir. 1977) (LITE generic for beer), cert. denied, 434 U.S. 1025, 196 USPQ 592 (1978); In re Sun Oil Co., 426 F.2d 401, 165 USPQ 718 (C.C.P.A. 1970) (CUSTOM BLENDED generic for gasoline); In re Helena Rubenstein, Inc., 410 F.2d 438, 161 USPQ 606 (C.C.P.A. 1969) (PASTEURIZED for face cream incapable); Roselux Chemical Co, Inc. v. Parsons Ammonia Co., Inc., 299 F.2d 855, 132 USPQ 627 (C.C.P.A. 1962) (SUDSY generic for ammonia); In re Reckitt & Colman, North America Inc., 18 USPQ2d 1389 (TTAB 1991)(PERMA PRESS generic for soil and stain removers); In re Ricci-Italian Silversmiths, Inc., 16 USPQ2d 1727 (TTAB 1990) (ART DECO generic for flatware); In re Bonni Keller Collections Ltd., 6 USPQ2d 1224 (TTAB 1987) (LA LINGERIE generic for stores that sell lingerie); In re National Patent Development Corp., 231 USPQ 823 (TTAB 1986) (ULTRA PURE for interferons for medical use incapable); In re Wickerware, Inc., 227 USPQ 970 (TTAB 1985) (WICKERWARE generic for mail order and distributorship services in the field of wicker furniture and accessories); In re Hask Toiletries, 223 USPQ 1254 (TTAB 1984) (HENNA 'N' PLACENTA generic of ingredients for hair conditioner); In re Bee Pollen From England Ltd., 219 USPQ 163 (TTAB 1983) (BEE POLLEN FROM ENGLAND for bee pollen incapable).

A combination of generic terms may result in a unitary designation that is registrable if the juxtaposition of terms is incongruous or evokes a unique commercial impression. However, if the combination of two or more generic terms is such that each term retains its generic significance, then the combined expression is generic and thus incapable of denoting source. In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987) (SCREENWIPE). See also Eastern Air Lines, Inc. v. New York Air Lines, Inc., 559 F. Supp. 1270, 218 USPQ 71 (S.D.N.Y. 1983) (AIR SHUTTLE); Surgicenters of America, Inc. v. Medical Dental Surgeries, Co., 196 USPQ 121 (D. Oregon 1976), aff'd 202 USPQ 401 (9th Cir. 1979) (SURGICENTER); In re Leatherman Tool Group Inc., 32 USPQ2d 1443 (TTAB 1994) (POCKET SURVIVAL TOOL); In re Lowrance Electronics, 14 USPQ2d 1251 (TTAB 1989) (COMPUTER SONAR); Turtle Wax Inc. v. Blue Coral Inc., 2 USPQ2d 1534 (TTAB 1987) (WASH WAX); In re National Shooting Sports Foundation, Inc., 219 USPQ 1018 (TTAB 1983) (SHOOTING, HUNTING, OUTDOOR TRADE SHOW & CONFERENCE). Here, the combination of “THREAD” and “BEARS” does not create an expression capable of denoting source. As the attached evidence demonstrates, many sellers of these goods use the phrase “THREAD BEARS” and thus the source is not limited to applicant.

Prior Registration and Use

Please note that although applicant is the owner of the prior U.S. Registration No. 2146208 for “THREAD BEARS,” trademark rights are not static, and eligibility for registration must be determined on the basis of the facts and evidence in the record at the time registration is sought. (Emphasis added) In re Morton-Norwich Products, Inc., 671 F.2d 1332, 213 USPQ 9, 18 (C.C.P.A. 1982); In re Thunderbird Products Corp., 406 F.2d 1389, 160 USPQ 730 (C.C.P.A. 1969). A term that was once arbitrary or suggestive may lose its distinguishing and origin denoting characteristics through use in a descriptive sense over a period of time, and come to be regarded by the purchasing public as nothing more than a descriptive designation. In re Digital Research, Inc., 4 USPQ2d 1242, 1243 (TTAB 1987); In re International Spike, Inc., 190 USPQ 505, 507 (TTAB 1976).

Although applicant states that “our type of product was not offered any where until we offered it on eBay in 2000,” the fact that an applicant may be the first and sole user of a merely descriptive or generic designation does not justify registration where the evidence shows that the term is merely descriptive of the identified goods and/or services. In re Acuson, 225 USPQ 790 (TTAB 1985) (COMPUTED SONOGRAPHY descriptive of ultrasonic imaging instruments); In re National Shooting Sports Foundation, Inc., 219 USPQ 1018 (TTAB 1983) (SHOOTING, HUNTING, OUTDOOR TRADE SHOW AND CONFERENCE held apt descriptive name for conducting and arranging trade shows in the hunting, shooting and outdoor sports products field); TMEP §1209.03(c).

Conclusion

The requirement that applicant disclaim the wording “THREAD TEDS” and “THREAD BEARS” is hereby made FINAL. Please note the following: Once applicant has disclaimed the words “THREAD TEDS” and “THREAD BEARS” apart from the mark, the application may proceed to be published on the Principal Register.

JACUSTOMER-z4zcxv8e- :

"after the action becomes final, it will likely be necessary to proceed with legal action to have the mark be ruled "generic." "

JACUSTOMER-z4zcxv8e- :

What legal action could that be?

JACUSTOMER-z4zcxv8e- :

I think my question is not finished, status is saying "Awaiting expert reply". My last question was what legal actions that could be you advice and if my last "copy and past" from the TM office was meant with "final office action" ??

JACUSTOMER-z4zcxv8e- :

I keep getting email to leave feedback but I still wait for Expert Reply

JACUSTOMER-z4zcxv8e- :

I am sorry, I think my question was not compleet answered..see above. I submitted a lot information and my last question/explenation for the meaning to your answer was very short, see above: "Is this ment with final decission?" and "What legal actions doe you mean?".

JACUSTOMER-z4zcxv8e- :

You ended your answer with: "Hopefully, this answers all of your questions. If not, do not hesitate to let me know!" which I did but no reply anymore, besides the many emails to rate this lawyer. I am dissapointed for so little answer and have payed €25,- .