To: WANG, SONG (fkohmail@ gmail.com)
`
`Subject: U.S. Trademark A pplication Serial No. 90361269 - FFFISH - erick-053
`Sent: May 25, 2021 10:43:39 AM
`
`Sent As: ecom114@ uspto.gov
`
`Attachments: Attachment - 1
`Attachment - 2
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`Attachment - 3
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`Attachment - 4
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`Attachment - 5
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`Attachment - 15
`
`United States Patent and Trademark Office (USPTO)
`Office Action (O fficial Letter) A bout A pplicant’s Trademark A pplication
`
`U.S. Application
`Serial No.
`90361269
`
`Mark: FFFISH
`
`Correspondence
`Address:
`FRANCIS H. KOH
`KOH LAW FIRM,
`LLC.
`
`4800 HAMPDEN
`LANE, SUITE 200
`BETHESDA, MD
`20814
`
`Applicant:
`WANG, SONG
`
`Reference/Docket
`No. erick-053
`
`Correspondence
`Email Address:
`
`fkohmail@ gmail.com
`
`NONFINAL 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 A pplication System (TEAS). A link to the appropriate TEAS response form appears at the end of this
`
`
`
`
`
`
`
`
`Office action.
`
`Issue date: May 25, 2021
`
`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.
`
`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 A ct Section 2(d). TMEP § 704.02; see 15 U.S.C. §1052(d).
`
`Section 2(e)(1) Refusal - Merely Descriptive
`THIS REFUSAL APPLIES ONLY TO THE GOODS SPECIFIED THEREIN
`
`Registration is refused because the applied-for mark merely describes a feature of applicant's goods. 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 an applicant’s goods and/or
`services. TMEP §1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl
`& Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420,
`1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents , 252 U.S. 538, 543 (1920)).
`
`The applicant applied to register the mark FFFISH for “coats; jackets; shirts; sports jerseys; suits; sweaters; tee shirts; trousers; underwear.”
`
`The applied-for mark FFFISH is merely a misspelling of “fish.” A novel spelling or an intentional misspelling that is the phonetic equivalent of
`a merely descriptive word or term is also merely descriptive if purchasers would perceive the different spelling as the equivalent of the
`descriptive word or term. See In re Hercules Fasteners, Inc., 203 F.2d 753, 97 USPQ 355 (C.C.P.A. 1953) (holding “FASTIE,” phonetic
`spelling of “fast tie,” merely descriptive of tube sealing machines); Andrew J. McPartland, Inc. v. Montgomery Ward & Co., 164 F.2d 603, 76
`USPQ 97 (C.C.P.A. 1947) (holding “KWIXTART,” phonetic spelling of “quick start,” merely descriptive of electric storage batteries); In re
`Carlson, 91 USPQ2d 1198 (TTAB 2009) (holding “URBANHOUZING” phonetic spelling of “urban” and “housing,” merely descriptive of
`
`real estate services); In re State Chem. Mfg. Co., 225 USPQ 687 (TTAB 1985) (holding “FOM,” phonetic spelling of “foam,” merely
`
`descriptive of foam rug shampoo); TMEP §1209.03(j).
`
`As demonstrated by the attached entry from the online American Heritage dictionary, the term FISH is defined as “any of numerous cold-
`blooded aquatic vertebrates characteristically having fins, gills, and a streamlined body” and FISHING is defined as “the act, occupation, or
`sport of catching fish.”
`
`In addition, the attached third-party websites at https://www.hukgear.com/blogs/news/37150979-the-importance- of-performance-fishing- apparel,
`https://www.hukgear.com/blogs/news/37150979-the-importance- of-performance-fishing-apparel, and https://oceanicgear.com/ show that there
`exists fishing apparel, and that “fish” or “fishing” is a commonly used term to describe a type of clothing wear.
`
`The determination of whether a mark is merely descriptive is made in relation to an applicant’s goods and/or services, not in the abstract.
`DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012); In re The Chamber of
`Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); TMEP §1209.01(b). “Whether 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).
`
`That is, consumers who encounter the mark FFFISH would immediately recognize the intentional misspelling of the word to mean “fish” as the
`last four letters include that term. Moreover, consumers would expect to purchase clothing wear that is used in fishing or otherwise known as
`fish gear or fish apparel. Thus, the applied-for mark merely identifies a type of clothing wear.
`
`For the above reasons, the proposed mark FFFISH directly and immediately conveys information about applicant’s goods. Accordingly, the
`proposed mark is merely descriptive, and registration is properly refused on the Principal Register under section 2(e)(1).
`
`Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in
`
`
`
`
`
`
`
`
`support of registration.
`
`Advisory— Mark May Be Generic
`
`In addition to being merely descriptive, the applied-for mark appears to be generic in connection with the identified goods and/or services. “A
`generic mark, being the ‘ultimate in descriptiveness,’ cannot acquire distinctiveness” and thus is not entitled to registration on either the
`
`Principal or Supplemental Register under any circumstances. In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 1336, 116 USPQ2d 1262, 1264
`(Fed. Cir. 2015) (quoting H. Marvin Ginn Corp. v. Int’] Ass’n of Fire Chiefs, Inc ., 782 F.2d 987, 989, 228 USPQ 528, 530 (Fed. Cir. 1986)); see
`TMEP §§1209.01(c) et seq., 1209.02(a). Therefore, the trademark examining attorney cannot recommend that applicant amend the application to
`proceed under Trademark A ct Section 2(f) or on the Supplemental Register as possible response options to this refusal. See TMEP §1209.01(c).
`
`FAILURE TO RESPOND— ABANDONMENT OF GOODS
`
`If applicant does not respond to this Office action within the six-month period for response, the following goods in International Class 25 will be
`deleted from the application: “coats; jackets; shirts; sports jerseys; suits; sweaters; tee shirts; trousers; underwear.”
`
`The application will then proceed with the following goods in International Class 25 only: “costumes for use in role-playing games; costumes
`for use in the amusement industry; dresses; halloween costumes; jumpers; leggings; pajamas; skirts.”
`
`See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).
`
`How to respond. Click to file a response to this nonfinal Office action.
`
`/William T. Verhosek/
`
`William T. V erhosek
`Trademark Examining A ttorney
`USPTO/Law Office 114
`571-272-9464
`william.verhosek@ uspto.gov
`
`RESPONSE GUIDANCE
`e 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.
`
`
`
`
`
`
`
`
`
`05/25/2021 08:42:34 AM
`
`ae wry ae ee
`
`Mb ddd
`HERITAGE’
`
`OT ae aT Tee ae
`dictionary =.
`
`HOW TO USE THE
`DICTIONARY
`
`To look up an entry in The
`American Heritage Dictionary of
`the English Language, use the
`search window above. For best
`results, after typing in the word,
`click on the “Search” button
`instead of using the “enter” key.
`
`Some compound words (like bus
`rapid transit, dog whistie, or
`identity theft) don’t appear on
`the drop-down list when you
`type them in the search bar. For
`best results with compound
`words, place a quotation mark
`before the compound word in
`the search window.
`
`GUIDE TO THE DICTIONARY?
`
`fish! (fish)
`
`n.pl. ia or fish-es
`
`4, Informal A person, especially one considered deficient in something: a poor fish.
`v. fished, fish-ing, fish-es.
`
`4. To catch or try to catch fish.
`
`2. To look for something by feeling one's way; grope: fished in both pockets for a
`
`coin.
`
`3. To seek something in a sly or indirect way: fish for compliments.
`
`v.tr.
`1.
`‘a. To catch or try to catch (fish).
`b. To catch or try to catch fish in: fish mountain streams.
`2. To catch or pull as if fishing: deftly fished the corn out of the boiling water.
`Phrasal Verb:
`fish out
`To deplete (a lake, for example) of fish by fishing.
`
`AMERICAN HERITAGE
`DICTIONARY APP’
`
`The new American Heritage
`Dictionary app is now available
`for iOS and Android.
`
`THE AMERICAN
`HERITAGE
`DICTIONARY BLOG
`
`The articles in our blog examine
`new words, revised definitions,
`interesting images from the fifth
`edition, discussions of usage,
`and more.
`
`THE 100 WORDS
`
`
`
`
`
`
`
`
`05/25/2021 08:42:34 AM
`
`The Usage Panel is a group of
`nearly 200 prominent scholars,
`creative writers, journalists.
`diplomats, and others in
`occupations requiring mastery of
`language. Annual surveys have
`gauged the of
`
`fish or cut bait Informal
`To proceed with an activity or abandon it altogether.
`like a fish out of water
`Completely unfamiliar with one's surroundings or activity.
`neither fish nor fowl
`Having no specific characteristics: indefinite.
`other fish to fry Informal
`Other matters to attend to: He declined to come along to the movie, saying he had
`other fish to fry.
`
`particular usages and
`grammatical constructions.
`
`‘THE PANELISTS
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`
`[Middle English, from Old English fisc.]
`
`The American Heritage® Dictionary of the English Language, ay Edition copyright ©2020 by
`Houghton Mifflin Harcourt Publishing Company. All rights reserv
`
`Indo-European & Semitic Roots Appendices
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`‘Thousands of entries in the dictionary that trace their origins back to
`reconstructed proto-languages. You can obtain more information about these forms in our
`‘online appendices:
`
`Indo-European Roots
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`
`The Indo-European appendix covers soa pau Indo-European roots that have left their
`
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`words derived from them is available in our se of Indo-European Roots.
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`ri. Some characters in pronunciations and etymologies cannot be displayed properly in Intemet Explorer.
`
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`05/25/2021 08:43:54 AM
`
`0 he
`
`ET Fae ae Trae aa
`
`seer ictlonary “=,
`
`HOW TO USE THE
`DICTIONARY
`
`To look up an entry in The
`American Heritage Dictionary of
`the English Language, use the
`search window above. For best
`results, after typing in the word,
`click on the “Search” button
`instead of using the “enter” key
`
`Some compound words (like bus
`rapid transit, dog whistie, or
`identity theft) don’t appear on
`the drop-down list when you
`type them in the search bar. For
`best results with compound
`words, place a quotation mark
`before the compound word in
`the search window.
`
`GUIDE TO THE DICTIONARY?
`
`fish-ing« (fish ing)
`Share: Tweet
`n
`
`the act, occupation, or sport of catchin;
`
`2. A place for catching fish.
`
`‘The American Heritage® Dictionary of the English Language, eeseicrrosmngss cet:
`Houghton Mifflin Harcourt Publishing Company. All rights reserved
`
`Indo-European & Semitic Roots Appendices
`
`‘Thousands of entries that trace their to
`reconstructed rnguages. You can obtain more information about these forms in our
`online appendices:
`
`Indo-European Roots
`
`Semitic Roots
`
`‘The Indo-European appendix covers ea, ballast ee cee roots Loe! ae left their
`mark on English words. A glish
`words derived from them eaeeee Hak Dee ates ee a
`
`AMERICAN HERITAGE
`DICTIONARY APP’
`
`The new American Heritage
`Dictionary app is now available
`for iOS and Android.
`
`The articles in our blog examine
`new words, revised definitions,
`interesting images from the fifth
`edition, discussions of usage,
`and more.
`
`
`
`
`
`
`
`
`
`Bi THE USAGE PANEL
`
`‘The Usage Panel is a group of
`Nearly 200 prominent scholars,
`
`NEED HELP SOLVING
`CROSSWORD
`PUZZLE?
`Go to our Crossword Puzzle
`‘Solver and type in the letters
`that you know, and the Solver
`will produce a list of possible
`‘solutions.
`
`THE 100 WORDS*
`
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`‘selling 100 Words Series!
`
`FIND OUT MORE!”
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`
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`05/25/2021 09:13:26 AM
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`When you go fishing, how much do you think about the clothes you wear? You might assume that any old t-shirt and
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`05/25/2021 09:13:26 AM
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`No matter how hard you try to avoid it, if you go fishing enough you are guaranteed to get wet. Sprays from the ocean,
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`05/25/2021 09:14:28 AM
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`WEEKLY NEWSLETTER —_ BUSINESS TRENDS RETAIL NEWS
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`
`To: WANG, SONG (fkohmail@ gmail.com)
`
`Subject: U.S. Trademark A pplication Serial No. 90361269 - FFFISH - erick-053
`Sent: May 25, 2021 10:43:41 AM
`
`Sent As: ecom114@ uspto.gov
`
`Attachments:
`
`United States Patent and Trademark Office (USPTO)
`
`USPTO OFFICIAL NOTICE
`
`Office Action (Official Letter) has issued
`on May 25, 2021 for
`U.S. Trademark A pplication Serial No. 90361269
`
`Y our trademark application has been reviewed by a trademark examining attorney. As part of that review, the assigned attorney has issued an
`official letter that you must respond to by the specified deadline or your application will be abandoned. Please follow the steps below.
`
`(1) Read the official letter.
`
`(2) Direct questions about the contents of the Office action to the assigned attomey below.
`
`/William T. Verhosek/
`
`William T. V erhosek
`Trademark Examining A ttorney
`USPTO/Law Office 114
`571-272-9464
`william.verhosek@ uspto.gov
`
`Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or
`whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).
`
`(3) Respond within 6 months (or earlier, if required in the Office action) from May 25, 2021, using the Trademark Electronic A pplication
`System (TEAS). The response must be received by the USPTO before midnight Eastern Time of the last day of the response period. See the
`Office action for more information about how to respond
`
`GENERAL GUIDANCE
`
`Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing
`critical deadlines.
`
`Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.
`
`Beware of misleading notices sent by private companies about your application. Private companies not associated with the USPTO use
`public information available in trademark registrations to mail and email trademark-related offers and notices - most of which require fees.
`All official USPTO correspondence will only be emailed from the domain “@ uspto.gov.”
`
`
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