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  76/482300

 

The assigned examining attorney has reviewed the referenced application and determined the following.

 

THE MARK IS MERELY DESCRIPTIVE:

 

The examining attorney refuses registration on the Principal Register because the proposed mark merely describes the goods/services.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §§1209 et seq.

 

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/services.  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 §1209.01(b).

 

The examining attorney must consider whether a mark is merely descriptive in relation to the identified goods/services, not in the abstract.  In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (C.C.P.A. 1978); In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985); In re American Greetings Corp., 226 USPQ 365 (TTAB 1985).  TMEP §1209.01(b). 

 

It is not necessary that a term describe all of the purposes, functions, characteristics or features of the goods/services to be merely descriptive.  It is enough if the term describes one attribute of the goods/services.  In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973).  TMEP §1209.01(b). 

 

In this case, the applicant has applied to register the mark “SPARKLING CLEAR” for fruit-flavored drinks in International Class 32.  However, the term “SPARKLING” is defined as the “emission of gas bubbles; effervescence.”[1]  The term “CLEAR” is a laudatory term and is defined as “free from what dims, obscures, or darkens; unclouded: clear water; bright, clear colors” or “free from flaw, blemish, or impurity: a clear, perfect diamond.”[2]  In this case, the applicant’s mark touts that its effervescent fruit-flavored drinks would be free from flaws and impurities.  Accordingly, the proposed mark is descriptive of the applicant’s goods.  In support of this argument, it should be noted that the applicant’s prior registration, Registration No. 2,052,181, has the term “SPARKLING CLEAR” disclaimed since that term is descriptive for the goods.  

 

Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

 

 

INFORMALITIES

 

If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following issues:

 

 

SIGNIFICANCE OF WORDING:

 

The applicant must indicate whether the wording “SPARKLING CLEAR” has any significance in the relevant trade or industry or as applied to the goods/services.  37 C.F.R. §2.61(b).

 

 

NO CONFLICTING MARKS LOCATED:

 

The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.

 

 

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

 

 

 

                                                                   ______________________________

Robert L. Lorenzo

Trademark Attorney

Law Office 111

(703) 308-9111 x 117

Robert.Lorenzo@uspto.gov

 

 

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.