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  76/538173

 

The following is in response to the communication received on August 12, 2004.  The entity information is accepted.  However registration on the Principal Register has been refused in this case under Section 2(e)(1) of the Trademark Act, 15 U.S.C. Section 1052(e)(1), on the grounds that the applicant’s mark is merely descriptive of the services.  The examining attorney has carefully considered the applicant’s arguments and evidence in support of registration on the Principal Register and has found them to be unpersuasive.  Accordingly, the refusal of registration on the Principal Register is hereby continued.  Moreover, upon response by applicant, the examining attorney notes the following additional substantive refusal of registration.

 

A.                Mark is Merely Descriptive

 

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 and/or 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).  A mark that describes an intended user of a product or service is also merely descriptive within the meaning of Section 2(e)(1).  Hunter Publishing Co. v. Caulfield Publishing Ltd., 1 USPQ2d 1996 (TTAB 1986); In re Camel Mfg. Co., Inc., 222 USPQ 1031 (TTAB 1984); In re Gentex Corp., 151 USPQ 435 (TTAB 1966).

 

The determination of whether a mark is merely descriptive is considered in relation to the identified goods and/or services, not in the abstract.  In re Polo International Inc., 51 USPQ2d 1061 (TTAB 1999) (Board found that DOC in DOC-CONTROL would be understood to refer to the “documents” managed by applicant’s software, not “doctor” as shown in dictionary definition); In re Digital Research Inc., 4 USPQ2d 1242 (TTAB 1987) (CONCURRENT PC-DOS found merely descriptive of “computer programs recorded on disk;” it is unnecessary that programs actually run “concurrently,” as long as relevant trade clearly uses the denomination “concurrent” as a descriptor of this particular type of operating system); In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985); In re American Greetings Corp., 226 USPQ 365, 366 (TTAB 1985) (“Whether consumers could guess what the product is from consideration of the mark alone is not the test”); TMEP §1209.01(b).

 

Applicant’s mark in the present case is ARRACHERA, for restaurant services, namely, providing food services in a stand alone restaurant, and services in the form of a “food court” booth and/or kiosk offering food products for consumption.  As previously stated in the first Office action in this case, the arguments and evidence of which are incorporated by reference herein, the mark immediately identifies a feature of the services.  Specifically, the mark immediately informs potential consumers that the services feature, among other menu items, the cut of beef known as ARRACHERA.  See applicant’s statement explaining the meaning of the mark as set forth in applicant’s original application.  See also the previously-attached and newly attached excerpts from the World Wide Web, demonstrating that the term ARRACHERA refers to a specific food item.

 

In support of registration, applicant argues that the average U.S. consumer is unaware of the meaning of the term ARRACHERA.  This argument, however, ignores the fact that the evidence demonstrates that ARRACHERA refers to a very specific cut of meat that, at the very least, is well-known to persons of Mexican descent.  Considering the high number of U.S. consumers of Mexican descent, as well as the popularity of Mexican food among U.S. consumers in general, it is very likely that applicant’s consumers will, in fact, be aware of the cut of meat known as ARRACHERA.  Thus, the term is merely descriptive of applicant’s services.

 

B.                 Mark is Deceptively Misdescriptive

 

Assuming that, as stated, applicant’s services do not feature any dish or cut of meat known as ARRACHERA, registration is refused because the proposed mark is deceptively misdescriptive of applicant’s goods and/or services.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §1209.04.

 

A mark is deceptively misdescriptive if it describes an ingredient, quality, characteristic, function or feature of the relevant goods and/or services, and the description conveyed by the mark is both false and plausible.  In re Woodward & Lothrop Inc., 4 USPQ2d 1412 (TTAB 1987) (CAMEO held deceptively misdescriptive of jewelry); In re Ox‑Yoke Originals, Inc., 222 USPQ 352 (TTAB 1983) (G.I. held deceptively misdescriptive of gun cleaning patches, rods, brushes, solvents and oils); TMEP §1209.04.  In the present case, assuming, as stated, that applicant’s services do not feature ARRACHERA, the applicant’s mark is deceptively misdescriptive.

 

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.  If the applicant chooses to respond to the refusal to register, the applicant must also respond to the aforementioned continued Section 2(e)(1) descriptiveness refusal.

 

 

NOTICE:  TRADEMARK OPERATION RELOCATING OCTOBER AND NOVEMBER  2004

 

The Trademark Operation is relocating to Alexandria, Virginia, in October and November 2004.  Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:

 

Commissioner for Trademarks

P.O. Box 1451

Alexandria, VA  22313-1451

 

Applicants, registration owners, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at www.uspto.gov.

 

My Law Office will move on  November 2, 2004.  To reach me by phone after that date call (571) 272-9348. 

 

To submit a fax response to this Office action after that date, send your response to the Law Office fax number, namely (571) 273-9108.

 

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

 

                                                                        Regards,

 

/Scott M. Oslick/

Trademark Examining Attorney

Law Office 108

(703) 308-9108 x117 (Telephone)

(703) 746-8108 (Fax - Official Responses Only)

 

 

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 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.