Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

 

Serial Number  76/616468

 

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

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

 

REFUSAL-MERELY DESCRIPTIVE

Registration is refused because the proposed mark merely describes features, and/or purpose of applicant’s goods.  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 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, 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).

 

The applicant has requested registration of the mark PAIN FREE, for “homeopathic remedies and preparations; pharmaceutical preparations; dietary supplements; dietary food supplements; nutritional supplements; herbal remedies; liquid drinks and powder drink mixes; ready to eat food bars.”  The proposed mark is a combination of a descriptive and laudatory term denoting a certain quality, feature, and/or purpose of the goods over other manufacturers of the same or similar goods.  Laudatory terms, i.e., those terms that attribute quality or excellence to goods or services, are considered descriptive terms under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §1209.03(k).  That is, laudatory terms, phrases and slogans are nondistinctive and unregistrable without proof of acquired distinctiveness.  In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001) (THE ULTIMATE BIKE RACK); In re Best Software Inc., 58 USPQ2d 1314 (TTAB 2001) (BEST and PREMIER); In re Dos Padres Inc., 49 USPQ2d 1860 (TTAB 1998) (QUESO QUESADILLA SUPREME); In re Consolidated Cigar Co., 35 USPQ2d 1290 (TTAB 1995) (SUPER BUY); General Foods Corp. v. Ralston Purina Co., 220 USPQ 990 (TTAB 1984) (ORIGINAL BLEND).

In support of the position that the applicant’s mark is merely descriptive, the examining attorney submits dictionary evidence from The American Heritage Dictionary, defining the terms PAIN and FREE respectively. 

The term PAIN is defined as

pain (pân) noun

1.         An unpleasant sensation occurring in varying degrees of severity as a consequence of injury, disease, or emotional disorder.

2.            Suffering or distress.[1]

 

The term FREE is defined as

free (frê) adjective

fre·er, fre·est

Not affected or restricted by a given condition or circumstance: a healthy animal, free of disease; free from need. b. Not subject to a given condition; exempt: income that is free of all taxes. © Not subject to external restraint: “Comment is free but facts are sacred” (Charles Prestwich Scott).[2]

 

Applicant should note that a mark that combines descriptive terms may be registrable if the composite creates a unitary mark with a separate, nondescriptive meaning.  However, if each component retains its descriptive significance in relation to the goods or services, the combination results in a composite that is itself descriptive.  In re Tower Tech, Inc., 64 USPQ2d 1314 (TTAB 2002) (SMARTTOWER merely descriptive of “commercial and industrial cooling towers and accessories therefor, sold as a unit”); In re Sun Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001) (AGENTBEANS merely descriptive of computer software for use in development and deployment of application programs on global computer network); In re Putman Publishing Co., 39 USPQ2d 2021 (TTAB 1996) (FOOD & BEVERAGE ONLINE held to be merely descriptive of news and information service for the food processing industry); In re Copytele Inc., 31 USPQ2d 1540 (TTAB 1994) (SCREEN FAX PHONE merely descriptive of “facsimile terminals employing electrophoretic displays”); In re Entenmann’s Inc., 15 USPQ2d 1750 (TTAB 1990), aff’d per curiam, 928 F.2d 411 (Fed. Cir. 1991) (OATNUT held to be merely descriptive of bread containing oats and hazelnuts).

 

Here the composite mark creates a unitary  mark, however, the meaning remains descriptive.  Accordingly, the mark is refused registration on the Principal Register under Section 2(e)(1).

 

SECTION 2(f) SUGGESTED – DISTINCTIVENESS BASED ON PRIOR REGISTRATIONS

Applicant may seek Principal Register registration under Trademark Act Section 2(f), 15 U.S.C. §1052(f), by claiming acquired distinctiveness through ownership of U.S. Registrations 2299138 and 2538955.  To do so, applicant must submit the following statement, if accurate:

 

The mark has become distinctive of the goods and/or services as evidenced by ownership of U.S. Registration 2299138 and 2538955 on the Principal Register for the same mark for related goods or services. 

 

37 C.F.R. §2.41(b); TMEP §§1212.04 et seq.

 

 

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 below listed informalities.

INFORMALITIES

1.   IDENTIFICATION OF GOODS -UNACCEPTABLE:

The identification of goods is indefinite because the applicant does not clearly specify the commercial name of the goods and the purpose of the goods (it is outlined below as to where further clarification is required).  The identification of goods must be specific. The applicant must amend the identification to specify the common commercial name of the goods or to indicate their nature.  The identification must be all‑inclusive. The applicant should amend the identification to replace this wording with "namely." Also, the identification of goods is too broad because it could include goods classified in other classes. The applicant may amend the identification to substitute the following wording, if accurate:  “Homeopathic remedies and preparations [specify the nature of the remedies, and the preparations must be specified as to the purpose or for the treatment of and specify what it treats]; pharmaceutical preparations [specify the purpose or for the treatment of and specify what it treats]; dietary supplements; dietary food supplements; nutritional supplements; herbal remedies, namely, [specify the goods and the purpose, i.e., herbal mud packs for therapeutic purposes], liquid drinks and powder drink mixes for meal replacement purposes, ” in International Class 005;

 

 

“Ready to eat cereal derived food bars,” in International Class 030;

 

“Liquid soft drinks and powder soft drink mixes,” in International Class 032.   37 C.F.R. Section 2.71(a); TMEP sections 1402.01 and 1402.03 et seq. [3]

 

 

Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.

 

Additionally note that, depending on the decision of the identification of goods/services the classification of the goods/services may change.

 

2.   REQUIREMENTS FOR COMBINED APPLICATION:

If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those goods and/or services based on <an intent to use the mark in commerce under Trademark Act Section 1(b)/a foreign registration under Trademark Act Section 44(e)/an intent to use the mark under Trademark Act Section 1(b) and/or a foreign registration under Trademark Act Section 44(e)>:

 

(1)   Applicant must list the goods and/or services by international class with the classes listed in ascending numerical order.  TMEP § 1403.01; and

 

(2)   Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid.  37 C.F.R. §2.86(a)(2); TMEP §§810.01 and 1403.01.

 

3.   CLAIMED PRIOR REGISTRATION IS CANCELLED

Applicant’s claim of ownership of U.S. Registration No. 1366058 will not be printed on any registration, which may issue from this application because Office records show that the claimed registration is 1366058.  Only claims of ownership of live registrations are printed.  37 C.F.R. §2.36; TMEP §812.

 

 

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.

 

 

Darryl M. Spruill

Trademark Attorney

Law Office 112

(571) 272-9418 (office)

(571) 273-9418  (fax)

darryl.spruill@uspto.gov

/Darryl M. Sprui

 

 

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.