To:
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`Subject:
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`Sent:
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`Sent As:
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`Attachments:
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`Rugpad.com, LLC (trademarkdocket@venable.com)
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`U.S. Trademark Application Serial No. 88798538 - RUGPAD.COM - 43912-518020
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`November 20, 2020 01:57:47 PM
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`ecom103@uspto.gov
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`United States Patent and Trademark Office (USPTO)
`Office Action (Official Letter) About Applicant’s Trademark Application
`
`U.S. Application Serial No.
`88798538
`
`Mark:   RUGPAD.COM
`
`Correspondence Address: 
`Rebecca Liebowitz
`VENABLE LLP
`P.O. BOX 34385
`WASHINGTON DC 20043
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`Applicant:   Rugpad.com,
`LLC
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`    
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`Reference/Docket No.
`43912-518020
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`Correspondence Email
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`Address:  
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`trademarkdocket@venable.com
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`FINAL OFFICE ACTION
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`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
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`link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action.   
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`Issue date:  November 20, 2020
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`INTRODUCTION
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`This Office action is in response to applicant’s communication filed on November 5, 2020.
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`In a previous Office action(s) dated May 6, 2020, the trademark examining attorney refused registration of the applied-for mark based on the
`following:  Section 2e1 for being merely descriptive.  In addition, applicant was required to satisfy the following requirement(s): amend the
`identification of goods in class 27, provide information as to the significance of the terms and satisfy the unsigned application requirements.
`Applicant was also given a Section 2d prior application advisory.
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`Based on applicant’s response, the trademark examining attorney notes that the following requirement(s) have been satisfied: definite amended
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`identification of goods provided.    See TMEP §§713.02, 714.04.  
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`The following refusal(s) have also been obviated:  prior pending application has abandoned, therefore, Section 2d advisory obviated.  See TMEP
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`§§713.02, 714.04.  
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`Further, the trademark examining attorney maintains and now makes FINAL the refusal(s) and/or requirement(s) in the summary of issues
`below.  See 37 C.F.R. §2.63(b); TMEP §714.04.
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`SUMMARY OF ISSUES MADE FINAL that applicant must address:
`Section 2e1 merely descriptive
`Significance of the terms
`Unsigned application
`
`Merely Descriptive
`The refusal under Trademark Act Section 2(e)(1) is now made FINAL for the reasons set forth below.  See 15 U.S.C. §1052(e)(1); 37 C.F.R.
`§2.63(b).
`
`  A
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` 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,
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`1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)).     Applicant has applied for the mark “RUGPAD.COM” for “Adhesive shelf and drawer liners; Yoga mats; personal exercise mats; gymnasium
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`exercise mats; meditation mats; pilates mats; non-slip rug pads and rug underlays in the nature of rug grippers; bath mats; non-slip mats for
`baths.”
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`The term “rug pad”    is defined as: “a pad placed under a carpet.”
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`.COM is “Part of the Internet address of many companies and organizations. It indicates that the site is commercial, as opposed to educational or
`governmental.”
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`   See the dictionary definition(s) attached to the first office action.
`
`  Thus “rug
`A portion of applicant’s goods are the rug pads themselves (see “non-slip rug pads and rug underlays in the nature of rug grippers”).
`pad” is the generic term for these goods.   Note that the misspelling with no space does not alter the descriptive nature of the mark.  Consumers
`will understand that the words are merely put together and have the same meaning.
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`As to the remainder of the goods, rug pads are used as various types of other mats and liners and vice versa (ie other mats and liners are used as
`rug pads), including shelf and drawer liners, exercise mats etc.  See for example the following excerpts from representative websites attached to
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`the first office action discussing such usages eg:   
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`“Our rug pads come in the most pre-cut sizes to meet your needs. For unique sizes and shapes, you can simply trim our pad with a household
`scissor. Just put the pad down, place the rug on top and trim off any excess material. And use the extra for drawer or shelf liners…”
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`“Shelf liners made from nonskid rubber are an adequate substitute for commercially available rug holders…Appropriate shelf liners may appear
`as a roll or sheet of rubber that has small holes or a waffle-like appearance. Shelf liners that are suitable for use as rug holders often appear the
`same as miniature rug holders.”
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`“Repurpose an old yoga mat as a non-slip rug pad”
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`“With improved acoustics, you won’t have to feel bad about jumping up and down during the cardio portion of your pilates workout.”
`(discussing uses of rug pads)
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`Thus, as to the remaining goods, the mark describes a feature, use and purpose of the goods, which may be used as rug pads and vice versa.
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`As to .COM in applicant’s mark, the non-source-identifying generic top-level domain (gTLD) “.com” merely indicates an Internet address for
`use by commercial, for-profit organizations.  See, e.g., In re 1800Mattress.com IP LLC, 586 F.3d 1359, 1364, 92 USPQ2d 1682, 1685 (Fed. Cir.
`2009); In re Hotels.com, L.P., 573 F.3d 1300, 1301, 1304, 91 USPQ2d 1532, 1533, 1535 (Fed. Cir. 2009); In re Oppedahl & Larsen LLP, 373
`F.3d 1171, 1175-77, 71 USPQ2d 1370, 1373-74 (Fed. Cir. 2004); see also TMEP §§1209.03(m), 1215.01. Thus, this addition does not alter the
`descriptive nature of the mark.
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`Applicant argues that the stylization in the mark obviates this refusal.  This argument is not persuasive. The applied-for mark shows the wording
`in stylized lettering with a curved line extending from the R.  Stylized descriptive or generic wording is registrable only if the stylization creates a
`commercial impression separate and apart from the impression made by the wording itself.  See In re Cordua Rests., Inc., 823 F.3d 594, 606, 118
`USPQ2d 1632, 1639-40 (Fed. Cir. 2016); In re Northland Aluminum Prods., Inc., 777 F.2d 1556, 1561, 227 USPQ 961, 964 (Fed. Cir. 1985);
`TMEP §1209.03(w).  Common and ordinary lettering with minimal stylization, as in this case, is generally not sufficiently striking, unique, or
`distinctive as to make an impression on purchasers separate from the wording.  See In re Sadoru Grp., Ltd., 105 USPQ2d 1484, 1487 (TTAB
`2012).  This R line underlining is not sufficiently distinctive and does not obviate the descriptive nature of the mark.
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`In view of the foregoing, the refusal to register under Section 2e1 of the Trademark Act is continued and made final.
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`Significance of the terms
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`To permit proper examination of the application, applicant must submit additional information about the meaning of the mark.  See 37 C.F.R.
`§2.61(b); TMEP §814.  Applicant failed to respond to this inquiry other than stating that rug pads are included in the goods identification. This
`response is not complete, therefore, this requirement is continued and made final.
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`Specifically, there are goods in the goods identification other than simply “rug pads.”   Applicant must respond to this inquiry as to all of the
`remaining goods, other than those listed as simply “rug pads.” Applicant must respond to the following questions and/or requests for
`documentation to satisfy this request for information as to ALL goods other than the explicitly named “rug pads”:   (1) are the goods derived
`from rug pads? (2) can the goods be used as rug pads? (3) are the goods rug pads which can be used as the listed types of mats and/or liners etc?
`(4) describe the relationship between rug pads and each of the listed goods (5)  describe the nature of the goods providing examples of similar
`goods and their uses. For example, applicant has listed “yoga mats”, which could be a yoga mat made from a rug pad, or a yoga mat which can
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`also be used as a rug pad etc.    See 37 C.F.R. §2.61(b); TMEP §814.   
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`Failure to comply with a request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016);
`TMEP §814.  Merely stating that information about the goods or services is available on applicant’s website is an insufficient response and will
`not make the relevant information of record.  See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).
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`This requirement is continued and made final.
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`Unsigned application
`The application was unsigned, resulting in the application not being properly verified.  See TMEP §804.  Applicant must properly sign and
`therefore verify the application in an affidavit or signed declaration under 37 C.F.R. §2.20.  See 37 C.F.R. §§2.2(n), 2.33(a), (b)(2)-(c), 2.34(a)(2),
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`(a)(3)(i), (a)(4)(ii); TMEP §804.02.  
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`The following statements must be verified:  That applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to
`use the mark in commerce as of the application filing date; that applicant believes applicant is entitled to use the mark in commerce on or in
`connection with the goods or services specified in the application; that to the best of the signatory’s knowledge and belief, no other persons,
`except, if applicable, concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to
`be likely, when used on or in connection with the goods/services of such other persons, to cause confusion or mistake, or to deceive; and that the
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`facts set forth in the application are true.  37 C.F.R. §§2.33(b)(2), (c), 2.34(a)(2), (a)(3)(i), (a)(4)(ii).  
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`For more information about the verified statement and instructions on providing one using the online Trademark Electronic Application System
`(TEAS) response form, see the Verified statement webpage.
`This requirement is continued and made final.
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`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.  
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`The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in
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`the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.    
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`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).
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`/Rebecca L. Gilbert/
`Rebecca L. Gilbert
`Examining Attorney
`Law Office 103
`571-272-9431
`Rebecca.Gilbert@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
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`circumstances could affect an applicant’s ability to timely respond.   
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`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.
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`If needed, find contact information for the supervisor of the office or unit listed in the signature block.
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`

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`To:
`
`Subject:
`
`Sent:
`
`Sent As:
`
`Attachments:
`
`Rugpad.com, LLC (trademarkdocket@venable.com)
`
`U.S. Trademark Application Serial No. 88798538 - RUGPAD.COM - 43912-518020
`
`November 20, 2020 01:57:48 PM
`
`ecom103@uspto.gov
`
`United States Patent and Trademark Office (USPTO)
`
`USPTO OFFICIAL NOTICE
`
`Office Action (Official Letter) has issued
`on November 20, 2020 for
`U.S. Trademark Application Serial No. 88798538
`
`Your 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 attorney below.   
`
`/Rebecca L. Gilbert/
`Rebecca L. Gilbert
`Examining Attorney
`Law Office 103
`571-272-9431
`Rebecca.Gilbert@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 November 20, 2020, using the Trademark
`Electronic Application 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
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`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,
`application.
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`if needed,
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`to ensure you receive important USPTO notices about your
`
`·       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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