Trademark Update -Nonfinal refusal on Occupy Los Angeles app.

by Sue Basko 

The trademark application filed by Jeffrey Henderson on "Occupy Los Angeles" as a PAC has been given a nonfinal rejection.  He would have 6 months to "fix" the problems in the application.  However, I do not think he would be able to fix the objections.  Then his application will go "dead" in 6 months.  The other application by Aaron Hawke, for Occupy LA for use on T-shirts, should be receiving some sort of action very soon.  I am posting part of the examiners' letter below.  Read it to notice how complicated trademark law is.  NOTE: The pic above has nothing to do with this story. It is just a cool pic of the OLA treehouse.  

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.

 

ISSUE/MAILING DATE:

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

Summary of Issues – Applicant must respond to the following:

(1)    Section 2(e)(1) refusal for descriptiveness of the mark

(2)    Sections 1, 2, 3 and 45 refusal for informational matter

(3)    Applicant address information

(4)    Applicant entity information

(5)    Identification of Services

(6)    Filing Basis Omitted

 

Search Results

 

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).

 

Section 2(e)(1) Refusal – Descriptiveness

 

Registration is refused because the applied-for mark merely describes a characteristic of applicant’s services.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

 

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods and/or services.  TMEP §1209.01(b); see In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005); In re Gyulay, 820 F.2d 1216, 1217-18, 3 USPQ2d 1009, 1010 (Fed. Cir. 1987). 

 

In the present case, applicant’s mark “OCCUPY LOS ANGELES” is merely descriptive of a characteristic of the identified political action committee services.  The dictionary defines “OCCUPY” as “to take and hold possession of, esp as a demonstration” and “LOS ANGELES” as “A city of southern California on the Pacific Ocean in a widespread metropolitan area.”  See attached dictionary evidence from the Internet:

 

http://www.collinsdictionary.com/dictionary/english/occupy

http://www.thefreedictionary.com/Los+Angeles

 

Thus, the mark “OCCUPY LOS ANGELES” is merely descriptive of a characteristic of the identified services, namely, political action committee services to promote interests in the field of politics through the taking and holding possession of, as a demonstration, parts of the aforementioned city of southern California.

 

The term “OCCUPY” is routinely used in connection with a political movement.  As the attached encyclopedia evidence demonstrates, the Occupy movement generally refers to an international protest movement which is primarily directed against economic and social inequity.  The Occupy movement began with Occupy Wall Street, and is referred to on the occupywallst.org website as a people-powered movement to fight back against the “corrosive power of major banks and multinational corporations over the democratic process, and the role of Wall Street in creating an economic collapse that has caused the greatest recession in generations.”  However as the attached CNN article indicates, “What started as the Occupy Wall Street movement in New York in September has spread across major cities worldwide as a call to action against unequal distribution of wealth.”  Since the protest movement has moved beyond Wall Street, the term “OCCUPY” is now used generally to refer to protests against economic and social inequality, regardless of a geographic location.  For example, a Wall Street Journal article titled “Fairness and the ‘Occupy’ Movement” discusses why protesters are on firm ground when they denounce those who get rich because of their political pull.  In addition, in comparing the Occupy movement to the partisan trajectory of the Tea Party, a U.S. News & World Report article states that the Occupy movement is “a more authentic and independent movement, giving voice to the outrage at how Wall Street has crashed our economy and how Wall Street and giant corporations have captured our political process and debased our democracy.”  Thus when used in connection with political events and activities, the term “OCCUPY” merely describes the previously discussed protest movement.  See attached website evidence from the Internet:

 

http://en.wikipedia.org/wiki/Occupy_movement

 

http://occupywallst.org/about/

 

http://articles.cnn.com/2011-11-08/us/us_occupy-protest-roundup_1_protesters-face-protesters-plan-demonstrators?_s=PM:US

 

http://www.aei.org/article/society-and-culture/free-enterprise/fairness-and-the-occupy-movement/

 

http://www.usnews.com/debate-club/is-occupy-wall-street-the-next-tea-party-movement/occupy-movement-purposely-has-no-single-set-demand-occupy-movement-purposely-has-no-single-set-demand

 

Applicant’s mark also contains the term “LOS ANGELES”.  However, the addition of that geographic designation to the term “OCCUPY” merely signifies the geographical extension of the “OCCUPY” movement.  In addition to the attached evidence showing Occupy movements in Los Angeles, Boston, Portland, Chicago, Seattle, Austin and Denver, the attached npr.org article discusses protests in Dallas, Philadelphia, Buffalo, and Rochester.  The attached Time Magazine article discusses the Occupy Wall Street movement moving as far as London.  With regard to Los Angeles specifically, the occupylosangeles.org website indicates that the “Los Angeles General Assembly occupying City Hall Park in Downtown Los Angeles urge you to assert your power.”  A story from the national newspaper USA Today describes the eviction of “Occupy L.A. protesters.”  Seeattached website evidence from the Internet:

 

http://www.usatoday.com/news/nation/story/2011-11-30/occupy-LA-protests/51486756/1

 

http://www.npr.org/2011/11/17/142461091/occupy-protests-coordinated-nationwide

 

http://www.time.com/time/world/article/0,8599,2097035,00.html

 

http://occupylosangeles.org/

 

http://www.occupyboston.org/

 

http://occupyportland.org/

 

http://occupychi.org/

 

http://occupyseattle.org/

 

http://occupyaustin.org/

 

http://occupydenver.org/

 

The evidence shows that the public routinely encounters the word “OCCUPY” combined with a geographic place name to refer to an arm of the Occupy political movement located in that place.  Moreover, the evidence shows this type of reference with “OCCUPY LOS ANGELES” specifically.  Thus when used in connection with applicant’s political action committee services, the mark “OCCUPY LOS ANGELES” would be understood by the public to merely describe the political movement to protest the unequal distribution of wealth taking place in Los Angeles.

 

Further, applicant’s identification of services includes “Political action committee services, namely, promoting the interests of Occupy Los Angeles in the field of politics”.  Thus, applicant’s identification of services provides further evidence of the descriptive nature of applicant’s mark.

 

Since applicant’s mark is merely descriptive of the identified services, registration is refused under Section 2(e)(1) of the Trademark Act.

 

Applicant should note the following additional ground for refusal.

 

Sections 1, 2, 3 and 45 Refusal – Informational Matter

 

Registration is refused because the applied-for mark is merely informational matter; it does not function as a service mark to identify and distinguish applicant’s services from those of others and to indicate the source of applicant’s services.  Trademark Act Sections 1, 2, 3 and 45, 15 U.S.C. §§1051-1053, 1127; see In re The Signal Cos., 228 USPQ 956 (TTAB 1986); TMEP §§904.07(b), 1301.02(a).

 

The applied-for mark is merely informational matter because as the previously discussed evidence demonstrates, the mark “OCCUPY LOS ANGELES” is widely used to refer to a recognized political movement.  The evidence shows that the terms “OCCUPY” and “OCCUPY LOS ANGELES” are common, familiar phrases that identify a protest movement primarily directed against economic and social inequity.  Thus, the widespread use of these terms overwhelmingly indicates that consumers would recognize applicant’s mark as a reference to the protest movement instead of identifying a single source. “The more commonly a 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.”  See In re Eagle Crest Inc., 96 USPQ2d 1227, 1229 (TTAB 2010);Reed v. Amoco Oil Co., 611 F.Supp. 9, 225 USPQ 876, 877 (M.D. Tenn. 1984). 

 

In addition, given the everyday usage of the terms “OCCUPY” and “OCCUPY LOS ANGELES”, a registration for “OCCUPY LOS ANGELES” in connection with political action committee services would severely “interfere with the rights of others in this and related industries.”  See In re Worldwide Financial Services, Inc., citing In re Volvo Cars of North America Inc., 46 USPQ2D 1455 (TTAB 1998).  

 

Since applicant’s mark consists of merely informational matter, registration is refused under Sections 1, 2, 3 and 45 of the Trademark Act.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

Applicant must respond to the requirement(s) set forth below.

 

Applicant Address

 

Applicant has provided the city, state and zip code portion of his address, however applicant must specify his complete mailing address for the record.  37 C.F.R. §2.32(a)(4); TMEP §803.05.

 

Applicant Entity

 

Applicant must specify its form of business or type of legal entity and its national citizenship or U.S. state or foreign country of organization or incorporation.  See 37 C.F.R. §2.32(a)(3)(i)-(ii); TMEP §§803.03, 803.04.  For example, an applicant can apply as an individual, a partnership, a corporation, a joint venture, or the foreign equivalent thereof.  See 37 C.F.R. §2.32(a)(3); TMEP §§803.03 et seq. 

 

If applicant’s entity type is an individual, applicant must indicate his or her national citizenship for the record.  37 C.F.R. §2.32(a)(3)(i); TMEP §803.04. 

 

If applicant’s entity type is a corporation, association, partnership, joint venture, or the foreign equivalent, applicant must set forth the U.S. state or foreign country under whose laws applicant is organized or incorporated.  37 C.F.R. §2.32(a)(3)(ii); TMEP §§803.03(b)-(c), 803.04.  In addition, if applicant is a U.S. partnership or joint venture, applicant must list the names, legal entities and national citizenship or the U.S. state or foreign country of organization or incorporation of all the general partners or joint venturers.  37 C.F.R. §2.32(a)(3)(ii)-(iv); TMEP §§803.03(b), 803.04.  For an association, applicant must also specify whether the association is incorporated or unincorporated.  TMEP §803.03(c).

 

Identification of Services

 

The identification of services is indefinite and must be clarified by specifying the group whose interests are promoted in the field of politics.  See TMEP §1402.01.  Applicant may adopt the following identification, if accurate: 

 

Class 35:          “Political action committee services, namely, promoting the interests of {indicate specific group, e.g. the middle and working class population} in the field of politics.”

 

An applicant may amend an identification of services only to clarify or limit the services; adding to or broadening the scope of the services is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07 et seq.

 

For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchableManual of Acceptable Identifications of Goods and Services at http://tess2.uspto.gov/netahtml/tidm.html.  See TMEP §1402.04.

 

Filing Basis Omitted

 

Applicant has not specified a filing basis for the application.  An application must specify and meet the requirements of at least one filing basis.  37 C.F.R. §2.32(a)(5); TMEP §806.

 

An application may be filed based on any of the following:

 

(1)        Use of the mark in commerce under Trademark Act Section 1(a);

 

(2)        A bona fide intention to use the mark in commerce under Section 1(b);

 

(3)        A claim of priority under Section 44(d) that is based on an earlier-filed foreign application, and that has been filed within six months of the filing date of the foreign application; and/or

 

(4)        A foreign registration of a mark in applicant’s country of origin under Section 44(e).

 

15 U.S.C. §§1051(a)-(b), 1126(d)-(e); 37 C.F.R. §2.34(a)(1)-(a)(4); TMEP §806.01(a)-(d).

 

Therefore, applicant must (1) amend the application to specify at least one filing basis, and (2) satisfy all the requirements for the basis or bases asserted.  TMEP §806.

 

Depending on the circumstances, applicant may be entitled to assert more than one of the above bases.  When claiming more than one basis, applicant must (1) satisfy all requirements for each basis claimed; (2) state that more than one basis is being asserted; and (3) list separately each basis, followed by the goods or services to which that basis applies.  37 C.F.R. §2.34(b)(2); TMEP §806.02(a).

 

Although multi-basis applications are permitted, applicant cannot assert both use in commerce and intent to use for the same goods or services.  37 C.F.R. §2.34(b)(1); TMEP §806.02(b).

 

Requirements for an Application Based on Section 1(a):  Use in Commerce

 

An application based on use of the mark in commerce must include the following:

 

(1)        The following statement:  “The mark is in use in commerce, as defined by 15 U.S.C. §1127, and was in use in such commerce on or in connection with the goods or services listed in the application as of the application filing date;”

 

(2)        The date of first use of the mark anywhere on the goods or in connection with the services;

 

(3)        The date of first use of the mark in commerce as a trademark or service mark;

 

(4)        One “specimen” that shows the mark used on the goods, or in connection with the services, for each class of goods and services (i.e., shows how applicant actually uses the mark in commerce).  If a specimen was not submitted with the initial application, applicant must submit the following statement:  “The specimen was in use in commerce at least as early as the application filing date;” and

 

(5)        Verification, in an affidavit or signed declaration under 37 C.F.R. §2.20, of the above statements and dates of use.

 

See 15 U.S.C. §1051(a); 37 C.F.R. §§2.34(a)(1), 2.59(a), 2.193(e)(1); TMEP §806.01(a).

 

 

 

 

Requirements for an Application Based on Section 1(b):  Intent-to-Use

 

An application based on a bona fide intention to use the mark in commerce must include the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:

 

Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the filing date of the application.

 

15 U.S.C. §1051(b)(3)(B); 37 C.F.R. §2.34(a)(2); TMEP §806.01(b); see 37 C.F.R. §2.193(e)(1).

 

Response Guidelines

 

For this application to proceed toward registration, 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 for responding to a refusal and should consider such options carefully.  To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements. 

 

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, the trademark will fail to register, and the application fee will not be refunded.  See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a), 2.209(a); TMEP §§405.04, 718.01, 718.02.  Where the application has been abandoned for failure to respond to an Office action, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to live status.  See 37 C.F.R. §2.66; TMEP §1714.  There is a $100 fee for such petitions.  See 37 C.F.R. §§2.6, 2.66(b)(1).