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  76/551676

 

               This letter responds to the applicant's communication filed on February 10, 2005.

                The applicant disclaimed the wording WEIGHT LOSS presented argument in favor of registration and provided information in response to the examining attorney’s information request in the first office action.

                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 applicant’s goods.

                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.

 

 

SECTION 2(E)(1) ANALYSIS

 

                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 determination of whether or not a mark is merely descriptive must be made not in the abstract but, rather, in relation to the goods or services for which registration is sought; the context in which the mark is used, or intended to be used, in connection with those goods or services; and the possible significance which the mark would have, because of that context, to the average purchaser of the goods or services in the market place. See In re Omaha National Corp., 819 F. 2d 1117, 2 USPQ 2d 1859 (Fed. Cir. 1987); In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978); In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985).  Moreover, it is not necessary that a term describe all of the purposes, functions, characteristics or features of the services to be merely descriptive.  It is enough if the term describes one attribute of the services.  In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973).

 

               In the instant case, the applicant has applied to register the mark CORTISOL WEIGHT LOSS for dietary supplements that specifically control the cortisol levels in users body. See applicant’s exhibits that are attached to the applicant’s response of February 10, 2005.  Said exhibits are incorporated into the action herein by reference.  Specifically, the applicant’s goods are designed to affect levels of the hormone Cortisol, thus enhancing weight loss and other things that might be affected by a change in Cortisol levels.” See page 2 of the applicant’s response to the examining attorney’s first office action.  Also see Cortislim information, which was provided in response to an information request set forth in the first office action and is incorporated herein as an exhibit by reference, and states that the goods are a  “cortisol control product”,  “it is a all-natural dietary supplement that works with your body’s metabolism to control corisol levels within a health range and help you lose weight” and “cortislim sets the standards for effective corisol control and weight loss results.”

                 The examining attorney contends that the applicant is seeking registration for a proposed mark for goods that affect the level of Cortisol in the user’s body.  To support this contention, the examining attorney makes reference to the applicant’s evidence and response to the first office action, which is incorporated herein, which in part states “the products (applicant’s dietary supplements) are designed to affect levels of the hormone Cortisol.”  Accordingly, the applicant’s mark is merely descriptive of the target or subject matter of the applicant’s dietary supplements, namely,  to control the levels of the hormone “cortisol” in the human body. 

           As reflected by the applicant’s response of February 10, 2005, Cortisol is a hormone that the body requires for cardiovascular functions and the metabolism of carbohydrates.  Increased levels of cortisol result in various side effects such as increased appetite, fat deposits, weight gain, diabetes and depression.  Applicant’s dietary supplements are designed to help control healthy levels of cortisol in the body.  As such, mark merely describes an intended target or subject matter of the goods and should be refused registration under Section 2(e)(1) of the Trademark Act.  Thus, the mark is not registrable on the Principal Register.

                In support of registration, the applicant argues that its mark, CORTISOL WEIGHT LOSS, does not immediately identify or describe in consumers’ minds the identified goods.[1] The examining attorney must disagree with the applicant’s conclusion that its mark does not immediately identify or describe in consumers’ minds their goods.  The applicant’s mark is CORTISOL for a dietary supplement that allegedly regulates the levels of coritsol, a hormone that is naturally found in the human body.  As used by the applicant, the term CORTISOL merely refers to the targeted hormone for the applicant’s goods.  Despite the applicant’s arguments to the contrary, the commercial impression of the mark is merely descriptive in the context in which the mark is used, or intended to be used, in connection with the applicant’s goods of the targeted hormone of the applicant’s goods.

 CONCLUSION

                The applicant has not shown that the mark is anything but descriptive of the identified services offered.  The mark immediately identifies the applicant services and does nothing else.  Accordingly, the mark is refused registration on the Principal Register under Section 2(e)(1). The refusal to register the mark under Section 2(e)(1) is continued and made FINAL.

OTHER

                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).

 

NOTICE:  FEE CHANGE   

 

Effective January 31, 2005 and pursuant to the Consolidated Appropriations Act, 2005, Pub. L. 108-447, the following are the fees that will be charged for filing a trademark application:

 

(1) $325 per international class if filed electronically using the Trademark Electronic Application System (TEAS); or 

 

(2)   $375 per international class if filed on paper

 

These fees will be charged not only when a new application is filed, but also when payments are made to add classes to an existing application. If such payments are submitted with a TEAS response, the fee will be  $325 per class, and if such payments are made with a paper response, the fee will be $375 per class.

 

The new fee requirements will apply to any fees filed on or after January 31, 2005.

 

NOTICE:  TRADEMARK OPERATION RELOCATION

 

The Trademark Operation has relocated to Alexandria, Virginia.  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, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at http://www.gov.uspto.report/teas/index.html.

 

 

/WILLIAM H. DAWE III/

Trademark Attorney

Law Office 108

(571) 272-9337

 

 

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action issued via email you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above and include the serial number, law office number and examining attorney’s name in your response.

 

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

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

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