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  76/551676

 

 

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

 

SEARCH OF THE OFFICE RECORDS

 

            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. Section 1052(d).  TMEP section 1105.01.

 

REGISTRATION REFUSED - DECEPTIVENESS

 

                 Registration is refused because the proposed mark is deceptive.  Trademark Act Section 2(a), 15 U.S.C. §1052(a).  Specifically, applicant’s mark CORTISOL WEIGHT LOSS includes the term “CORTISOL,” which refers to the drug HYDOCORTISONE and infers that the identified goods, namely dietary supplements contain HYDROCORTISONE.  This ingredient is important to a purchasing decision because it is a hormone, when administered as a preparation, is used to treat inflammatory conditions and adrenal failure.  In re Budge Mfg. Co., 857 F.2d 773, 8 USPQ2d 1259 (Fed. Cir. 1988); In re Phillips-Van Heusen Corp., 63 USPQ2d 1047 (TTAB 2002); In re Organik Technologies, Inc., 41 USPQ2d 1690 (TTAB 1997); In re Shapely, Inc., 231 USPQ 72 (TTAB 1986); In re Intex Plastics Corp., 215 USPQ 1045 (TTAB 1982); See TMEP §§1203.02 et seq.

 

               If the goods do not, in fact, contain CORTISOL, the proposed mark will deceive the purchasing public as to an important factor in its purchasing decision.  If the goods do contain CORISOL, then applicant may amend the identification of goods to state that fact, and this refusal will be withdrawn.  Applicant may adopt the following identification of goods, if accurate: dietary supplements made in whole or in significant part of CORTISOL.

 

RIGHT TO RESPOND

 

            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.

 

REGISTRATION REFUSED – MERELY DISCRIPTIVE

 

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

 

              The applicant applied to register the mark CORTISOL WEIGHT LOSS[1] for dietary supplements, in Class 5. If, in fact, the dietary supplements are made of CORTISOL, a.k.a. hydrocortisone, the goods are merely descriptive of an ingredient of the applicant’s dietary supplements.[2]  Therefore, the mark is not registrable on the Principal Register.

 

RIGHT TO RESPOND

 

            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.

 

REGISTRATION REFUSED – DECEPTIVELY MISDESCRIPTIVE

 

             The applicant has applied to register the mark CORTISOL WEIGHT LOSS for dietary supplements, in Class 5.  In the alternative to the 2(e)(1) merely descriptive refusal above, the examining attorney refuses registration on the Principal Register because the mark is deceptively misdescriptive of the goods.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §1209.04. 

 

            A mark is descriptive if it conveys an accurate or true idea of an ingredient, quality, characteristic, function or feature of the relevant goods.  However, if the idea conveyed by the mark is false, and also plausible, then the term is deceptively misdescriptive and is unregistrable under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1).  In re Woodward & Lothrop Inc., 4 USPQ2d 1412 (TTAB 1987); In re Ox‑Yoke Originals, Inc., 222 USPQ 352 (TTAB 1983).  TMEP §1209.04. 

 

              In the instant matter, the examining attorney maintains the position that the applicant’s mark describes an ingredient of the goods that the applicant will offer, namely dietary supplements. Accordingly, the applicant’s mark CORISOL conveys to consumers the idea that the applicant’s goods contain CORTISOL.  However, if the applicant’s goods do not contain CORTISOL, a.k.a. hydrocortisone, and the mark CORTISOL is deceptively misdescriptive of the goods to be offered by the applicant.

 

         The Trademark Act does not prohibit the registration of misdescriptive terms unless consumers who encounter the mark are likely to believe the misrepresentation.  Binney & Smith Inc. v. Magic Marker Industries, Inc., 222 USPQ 1003 (TTAB 1984); TMEP §1209.03.  TMEP §1209.04.[3]  Inasmuch as preparations containing CORTISOL, a.k.a. hydrocortisone is are helpful in treating inflammatory conditions and adrenal failure, if the applicant’s goods do not contain CORITSOL, the mark conveys a description that is both false and plausible.  Accordingly, the proposed mark is misdescriptive and is not registrable on the Principal Register.

 

RIGHT TO RESPOND

 

            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 informal issue.

 

INFORMATION REQUIREMENT

             In order to allow for proper examination of the application, including the final determination as to whether the mark is merely descriptive, deceptive or generic in relation to the goods, the applicant must submit samples of advertisements or promotional materials for the goods or, if unavailable, for goods of the same type.  If such materials are not available, the applicant must describe the nature, purpose and channels of trade of the goods identified in the application.  In addition, the applicant must state whether the mark has any meaning in relation to the goods/services.  37 C.F.R. §2.61(b); TMEP §§1103.04 and 1105.02.

 

              Trademark Rule 2.61(b) states "The examiner may require the applicant to furnish such information and exhibits as may be reasonably necessary to the proper examination of the application".  The Trademark Trial and Appeal Board has upheld a refusal of registration based on the applicant's failure to provide information requested under this rule.  In re Babies Beat Inc., 13 USPQ2d 1729 (TTAB 1990)(failure to submit patent information regarding configuration). 

DISCLAIMER

 

             The applicant must disclaim the descriptive wording “WEIGHT LOSS” apart from the mark as shown. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a).  The wording is merely descriptive of the purpose of the applicant’s goods.

 

            The computerized printing format for the Trademark Official Gazette requires a standard form for a disclaimer.   TMEP §1213.08(a)(i).  A properly worded disclaimer should read as follows:

 

No claim is made to the exclusive right to use WEIGHT LOSS apart from the mark as shown.

 

See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).

 

NOTE:

 

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

 

/WILLIAM H. DAWE III/

Trademark Attorney

Law Office 108

(703) 308-9108 ext. 294

(703) 746-8108 (Fax)

 

 

 

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.

 

cor·ti·sol

 
cor·ti·sol (kôr¹tî-sôl´, -zôl´, -sol´, -zol´) noun

See hydrocortisone.

 [cortis(one) + -ol1.][4]

 

hy·dro·cor·ti·sone

 
hy·dro·cor·ti·sone (hì´dre-kôr¹tî-son´, -zon´) noun

1.    A steroid hormone, C21H30O5, produced by the adrenal cortex, that regulates carbohydrate metabolism and maintains blood pressure. Also called cortisol.

2. A preparation of this hormone obtained from natural sources or produced synthetically and used to treat inflammatory conditions and adrenal failure.[5]