Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. 

 

 

Serial Number  76/375861

 

This letter responds to the applicant’s communication filed on December 24, 2002.

 

The applicant has argued against the refusal based upon Section 2(e)(1) of the Trademark Act. 

The examining attorney has considered the applicant's arguments carefully but has found them unpersuasive.  For the reasons below, the refusal under Section 2(e)(1) is maintained and made FINAL.

 

Mark is Merely Descriptive

 

The applicant applied to register the mark NUTRITIONAL THERAPEUTIX for “vitamin, mineral and nutritional dietary supplements in tablet, capsule and powder form.”  Registration was refused under Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1), because the subject matter for which registration is sought is merely descriptive of the identified goods. 

 

A mark is merely descriptive under Trademark Act Section 2(e)(1), 15 U.S.C. 1052(e)(1), if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant goods.  In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987);  In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re MetPath Inc., 223 USPQ 88 (TTAB 1984); In re Bright‑Crest, Ltd., 204 USPQ 591 (TTAB 1979); TMEP section 1209.01(b).  In the present case the mark NUTRITIONAL THERAPEUTIX is descriptive of a feature, characteristic and purpose of the applicant’s goods. 

 

The word “NUTRITIONAL” is descriptive of “nutritional dietary supplements.”  The word “THERAPEUTIX”  is a novel spelling of the word “therapeutic.”  The word “therapeutic” is descriptive in relation to nutritional dietary supplements and vitamins.  The examining attorney has attached excerpts from the websites www.sunrise.wd.com, www.seasilverholistic.com. www.healthynewage.com, www.nnfa-northwest.com, www.herbaldave.com, www.musclephotos.com, and www.cdgs.com as evidence that the word “therapeutic” is descriptive in relation to vitamins and supplements.  The examining attorney also refers to the five (5) third-party registrations attached as evidence that the word “therapeutic” is disclaimed as descriptive in relation to vitamins and supplements. 

 

The applicant’s mark is merely a combination of two descriptive words.  The mere combination of descriptive words does not automatically create a nondescriptive new term.  The combination of descriptive words may also result in nothing more than the combination of descriptive words.  In re IBP, Inc. 228 USPQ 303 (TTAB 1985); In re Wink Corp., 218 USPQ 739 (TTAB 1983); In re Quik-Print Copy Shop, Inc., 205 USPQ 505 (CCPA 1980). 

 

The registration of a term created by combining two or more unregistrable words depends on whether in combination, a new and different commercial impression is created, and/or the term so created imparts a bizarre or incongruous meaning as used in connection with the goods or services.  In re Associated Theatre Clubs Co.,  9 USPQ2d 1660 (TTAB 1988); In re Quik-Print Copy Shop, Inc., 205 USPQ 505 (CCPA 1980).  Where the combination of descriptive words creates no incongruity, and no imagination is required to understand the nature of the goods or services, the mark remains merely descriptive.  In re Associated Theatre Clubs Co.,  9 USPQ2d 1660 (TTAB 1988); In re Orleans Wines, Ltd., 196 USPQ 516 (TTAB 1977); In re Scholastic Testing Services, Inc., 196 USPQ 517 (TTAB 1977).  In the present case there is not incongruity and no imagination is needed.  The mark NUTRITIONAL THERAPEUTIX is merely descriptive of a feature, characteristic and purpose of the applicant’s goods.  It is clear that the applicant’s mark is a mere combination of descriptive terms which result in nothing more than a combination of descriptive terms.

 

In sum, the mark NUTRITIONAL THERAPEUTIX does immediately convey to prospective consumers a feature, characteristic and purpose of the applicant’s goods.  For the reasons stated above, the refusal to register the applicant’s mark is maintained and made FINAL.

 

Options

 

Please note that the only appropriate responses to a final action are either (1) compliance with the outstanding requirements, if feasible, or (2) filing of an appeal to the Trademark Trial and Appeal Board.  37 C.F.R. Section 2.64(a).  If the applicant fails to respond within six months of the mailing date of this refusal, this Office will declare the application abandoned.  37 C.F.R. Section 2.65(a).

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

 

 

/Michael Souders/

Trademark Attorney

Law Office 115

ecom115@uspto.gov

(703) 308-9115 ext. 208

 

 

How to respond to this Office Action:

 

To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.

 

To respond formally via E-mail, visit http://www.gov.uspto.report/web/trademarks/tmelecresp.htm and follow the instructions.

 

To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.

 

To check the status of your application at any time, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.gov.uspto.report/

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.