 Read time: 9 minutes
In this issue:
Employee of the month
Kudos
Feature story
Office news
Library news
Legal news
Wellness
TM Outreach
Social programs & activities
September Employee of the Month - ? ? ?
Shhh!!! September's employee of the month hasn't been notified of the win just yet. We're keeping the secret until then, so we've blurred the winner's name and image.
The winner will be announced on the TM Homepage next week, so please check the page and help us congratulate this month's honoree.
You can also take a look at past winners and see which of your colleagues have received the honor. Maybe this is you, or you'll be next!
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Supervisors: Do you have a nomination for Employee of the Month? Each month a Trademarks employee will be recognized for the great work he or she does. Find nomination requirements and information on past winners.
Kudos to the following Trademarks employees for being nominated for Mentor of the Year, an award offered to mentors in the USPTO Mentoring Program.
The program is designed to help our agency turn our most experienced and valuable personnel into a training cadre that can share their expertise using a mentoring process tailored to our specific needs. Mentees focus on career development while mentors share their knowledge and guide mentees toward career success.
Mentees nominate their mentors for Mentor of the Year by sharing feedback with the program manager. They report that the mentors nominated have dedicated time to actively listen, provided support and encouragement, and created a comfortable, safe space during their meetings.
Thank you all for your dedication and contributions to the growth and development of employees throughout the agency!
Lydia Belzer, Law Office 124
Aubrey McMahan, Trademark Brand Management Group
Kathleen Miller, Workforce Programs Office
Stacy Wahlberg, Law Office 103
Jolie Washington, Liaison & Petitions Office
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Team Trademarks, please remember to use the new TM Kudos Nomination Form. It’s easier than ever to recognize others for all kinds of excellence in the workplace!
Plain language puzzler!
Ready to put your plain language skills to the test? Dive into our crossword puzzle, where every clue is inspired by the federal plain language guidelines. This puzzle is a fun way to brush up on the principles that keep our documents, concise, and reader-friendly. Let’s see how well you can decode the art of plain language! The answer key is at the end of this Madison Messages issue.
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Trademarks surpasses 750,000 first action classes examined so far this fiscal year
Trademarks Operations has examined over 785,000 first action classes so far this fiscal year! This brings us very close to our base goal of 806,000 and well within range of our group award targets.
With just a few weeks remaining in the fiscal year, we’re extremely grateful for everyone’s help in bringing down pendency.
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New research tools and trainings
 Feeling stuck on a tough topic? The Trademark Law Library's new Evidence Toolkits can help you build a search strategy and gather evidence for some new or complex industries in Trademarks. The kits contain definitions, links to pertinent companies, search strings, and more. We will add more topics to the Evidence Toolkits so check back for new additions!
In early October, we're repeating the July Lexis CLE on Ethics for anyone who couldn't attend. This engaging CLE focuses on ethical information and technology use in legal research, covering topics like deep fakes, AI-generated case citations, social media, and more. Here are the dates:
- Wednesday, October 2 at 11:00 a.m. ET
- Thursday, October 3 at 2:00 p.m. ET
Email invitations for the October CLE will be sent soon and keep an eye out for future invitations to other CLEs and library trainings this fall.
Stay in the loop when we add resources to our website, announce trainings, or share research tips: read our library blog! We recommend bookmarking the page or signing up for email alerts when new posts are added so you don't miss a thing. You can also find our latest blog post on the Legal Examinations Page.
TTAB Summaries
In re Weiss
Serial No. 88621608
In a precedential decision, the TTAB affirmed a refusal under Sections 1 and 45 because the specimens showed the applicant’s mark used in connection with online referral services rather than with the identified online retail store services. In re Weiss, Ser. No. 88621608, 2024 TTAB LEXIS 277 (TTAB 2024).
The Examining Attorney rejected the web pages submitted as specimens because they did not allow customers to purchase the featured cooking-related products directly from the applicant’s website. The Board took judicial notice that “’retail services’ entail ‘the sale of goods to ultimate consumers, usually in small quantities.’” In this case, the specimens did not show the mark used with online retail store services because the “Shop” portions of the web pages did not allow customers to purchase any of the goods directly from the applicant’s own website. Instead, hovering a mouse over the “Buy Now” buttons revealed links that redirected customers to third-party websites such as Amazon.com and Cuisinart.com for purchase of the goods from those third parties.
Applicant argued that she operates an “Amazon affiliate store” that connects buyers and sellers and enables the exchange of goods. However, the Board found that this constitutes a referral service, not a retail store service: “Applicant’s specimen does not display, for instance, a virtual ‘shopping cart,’ pricing, shipping information, or any other indicia of online retail store services. Rather, Applicant’s own evidence indicates that Applicant provides referrals and recommendations of cooking and food-related products offered for sale by third parties.” As a result, the Board held that the specimens did not show the mark used in connection with online retail store services, and affirmed the refusal.
In re SonderMind Inc.
Serial No. 97005621
In a non-precedential decision in July 2024, the TTAB reversed the refusal to register the mark DAILY MIND for “Mental health services; Mental health therapy services; Consulting services in the field of mental health and wellness; Providing on-line information in the field of mental health,” in International Class 44, based on Applicant’s failure to submit a disclaimer of DAILY.
The Examining Attorney argued that the term DAILY is not inherently distinctive in connection with the identified services because consumers would likely understand the term DAILY as describing the frequency in which the services are available or provided. The Examining Attorney referred to a dictionary definition for the term DAILY, as well as six third-party uses of that term in connection with mental health therapy services, including use of the term “daily therapy.”
Applicant argued that the mark is unitary, and relied on dictionary definitions of the term DAILY and MIND to explain that the mark has several possible suggestive connotations for consumers of health therapy services, including “a mood that occurs every day,” or “an intention that is acted on every day,” or “to intend something every day,” or “that Applicant’s services will help consumers create positive intentions they can focus on every day.”
The Board found that consumers encountering the mark will understand the word DAILY as modifying the word MIND and that “the words … function as a unit, with each relating to the other rather than directly to the [services].” In re Kraft, Inc., Ser. No. 73283428, 1983 TTAB LEXIS 134 (TTAB 1983). The Board explained that given the meanings of the words in the context of mental health care services, the mark DAILY MIND conveys suggestive meanings, such as “a mood that occurs each day” or “that Applicant’s services will help consumers create positive intentions they can focus on every day.” While the Examining Attorney is correct that each of these meanings involve a “daily” occurrence, the overall meanings conveyed by the mark as a whole creates a suggestiveness that is not found in the descriptive phrase “daily therapy.” As such, the term DAILY is inseparable from the entire mark DAILY MIND, which “has a distinct meaning of its own independent of the meaning of its constituent elements.” Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555 (Fed. Cir. 1991).
September wellness events
Visit the USPTO Worksite Wellness page to find information on a variety of wellness services, resources, and advice for maintaining a healthy lifestyle.
The Benefits and Work-Life branch offers wellness events throughout September and every month of the year. See the monthly wellness flyer to find webinars that can address your sleep issues, your budget, or help you create a retirement plan!
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Upcoming Trademarks Customer Outreach (TM Outreach) events
October Trademark Basics and Boot Camps
10/1: TM Basics Boot Camp 1 of 8 | Virtual | Register
10/4: TM Basics | St. Louis Public Library | Virtual | Register
10/8: TM Basics Boot Camp 2 of 8 | Virtual | Register
10/11: Federal Trademark Filing Overview | Virtual | Register
10/15: TM Basics Boot Camp 3 of 8 | Virtual | Register
10/17: Trademark Basics | Virtual | Contact TM Outreach
10/18: Searching Overview | Virtual | Contact TM Outreach
10/19: One-day TM Boot Camp | Chicago, IL | Contact TM Outreach
10/22: TM Basics Boot Camp 4 of 8 | Virtual | Register
10/23: One-day TM Boot Camp | Indianapolis, IN | Contact TM Outreach
10/25: Federal Trademark Filing Overview | Virtual | Register
10/29: TM Basics Boot Camp 5 of 8 | Virtual | Register
TM Outreach participates in several IP or entrepreneur related events and conferences each month. To find out more about those events, contact TM Outreach.
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Hispanic Heritage Month kickoff event
Celebrate Hispanic Heritage Month with Latinos in Trademarks (LIT) as they discuss the film “A Million Miles Away” on Wednesday, September 18 at 1pm ET.
The film follows Jose Hernandez, the first migrant farmworker to travel to space. This is a tale of perseverance, community and sacrifice to accomplish an impossible dream. Streaming is available on Amazon Prime.
This event kicks off LIT’s observance of Hispanic Heritage Month, celebrated annually from September 15 to October 15.
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 Trademarks' DEIA Council wants to hear from you!
The Trademark Diversity Equity Inclusion and Accessibility (DEIA) Council is interested in hearing from you, particularly about topics for future employee events that foster the USPTO’s mission to support a diverse, equitable, inclusive and accessible workplace.
Also let us know of inspirational and uplifting books for the quarterly TM DEIA Book Club. Please email Renee Servance with your suggestions.
Remember to check out the TM DEIA Council and subscribe to the TM DEIA Council Blog for more information.
Yoga and meditation series
Be sure to sign up for the Yoga Stretch Sessions available every other Wednesday from 1:30-1:45 p.m. ET.
Everything in this class is done from your chair the entire time. Learn to work your body from the comfort of your desk by doing triceps stretches, overhead reaches, shoulder rolls, side neck bends, and more.
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Focus on mindfulness by attending the Meditation Sessions, available every other Wednesday from 1:30-1:45 p.m. ET. With meditation, you can enter a state of deep relaxation and find tranquility in your mind.
Visit the Trademarks Interactive Calendar to sign up for yoga, meditation, or both and invigorate your workday!
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Plain language crossword answer key
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