UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/619587
APPLICANT: Nicolai, Judithe
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: TEEN CUISINE
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS: |
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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MAILING/E-MAILING DATE INFORMATION: If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.
Serial Number 76/619587
This letter responds to the applicant’s communication filed on December 19, 2005. With the response, the applicant amended the identification of services and advanced arguments for registration.
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/services.
Accordingly, and for the reasons below, the refusal under Section 2(e)(1) is maintained and made FINAL. Moreover, for the reasons set forth below, the requirements to amend the identification of goods and/or recitation of services, to provide information, to disclaim the term CUISINE, to comply with the multi-class requirements and to provide a specimen of use for the services are made FINAL.
Registration is refused because the proposed mark merely describes the subject matter of the goods/services of the applicant and the intended users of 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 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).
A term need not describe all of the purposes, functions, characteristics or features of the goods and/or services to be merely descriptive. For the purpose of a Section 2(e)(1) analysis, it is sufficient that the term describe only one attribute of the goods and/or services to be found merely descriptive. 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).
Finally, 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).
In the instant case, the applicant has applied to register the mark TEEN CUISINE for what appears to be instruction on cuisine for teenagers. The mark consists of the wording CUISINE which is modified by the term TEEN. As used by the applicant, the term CUISINE refers to a manner of good preparation and the term TEEN refers to teenagers. Accordingly, the mark is merely descriptive of the subject matter of the applicant’s goods and/or services and the intended audience. Thus, the mark is not registrable on the Principal Register.
In support of registration, the applicant merely argues that its mark, TEEN CUISINE does not does not immediately identify or describe in consumers’ minds the identified goods/services; and that the combination of the descriptive terms creates a composite which is non-descriptive of the goods/services. the examining attorney notes that in an effort to circumvent the 2(e)(1) refusal, the applicant amended the recitation of services and dropped the wording FOR CHILDREN AND YOUNG ADULTS.
As for the applicant’s argument, the examining attorney disagrees with the applicant’s conclusion that its mark does not immediately identify or describe in consumers’ minds their goods. The applicant’s mark is made up of the descriptive wording TEEN and CUISINE. As used by the applicant, the wording CUISINE refers to a type of food preparation and the term TEEN refers to teenagers, a.k.a. young adults. Clearly, the combination of these descriptive terms creates a mark that is still merely descriptive of the goods/services offered as the mark immediately and completely describes the subject matter and an intended user of the goods/services, e.g. instruction in the field of CUISINE preparation for children and young adults, a.k.a. TEENS. Clearly, applicant’s use of these terms is not arbitrary as it refers to the audience/intended users and the subject matter of the goods/services, e.g. education/training in the field of cuisine preparation for children and young adults.
The applicant has not shown that the mark is anything but descriptive of the identified goods/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.
Although the examining attorney has refused registration on the Principal Register, the applicant may amend the application to seek registration on the Supplemental Register. Trademark Act Section 23, 15 U.S.C. §1091; 37 C.F.R. §§2.47 and 2.75(a); TMEP §§801.02(b), 815 and 816 et seq.
The wording “Educational services, namely, conducting classes featuring instructional and entertaining subject matter relating to cooking and distributed by means of broadcasting, DVDs, videotapes, electronic communication networks and media” in the identification of services needs clarification because it is indefinite and seemingly involves multiple classes of services. Moreover, by deleting the wording “FOR CHILDREN AND YOUNG ADULTS” the applicant has expanded the recitation of services. Said wording must be restored to the identification of goods/services. Also, and as reflected by the fact that applicant states that the videotapes are purchased by consumers, the videotapes offered by the applicant are goods, not services. Accordingly, applicant may change this wording, if accurate to:
Class 9 – DVD’s and videotapes featuring instruction in the field of the preparation and cooking of food for children and young adults
Class 35 – distributorship services in the field of DVD’s of videotapes about the preparation and cooking of food for children and young adults via television and the Internet.
Class 41 – educational services, namely, instruction in the field of the preparation and cooking of food for children and young adults
TMEP §1402.01.
In the identification, the applicant should use the common commercial designation for the services, be as complete and specific as possible and avoid the use of indefinite words and phrases. The applicant may not include broad wording such as “services in connection with...” or “such as” or “including” or “and like services” or “systems” or “products” or “concepts” or “not limited to....” TMEP §§1402.03(a) and 1402.11.
Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, the applicant may not amend to include any services that are not within the scope of the services recited in the present identification.
For assistance regarding an acceptable listing of goods and/or services, please see the on‑line searchable Manual of Acceptable Identifications of Goods and Services, at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.
The examining attorney herein makes FINAL his refusal with respect to this issue.
FINAL - REQUIREMENTS OF MULTI-CLASS APPLICATION
The application identifies goods and services hat may be classified in several international classes. Therefore, the applicant must either: (1) restrict the application to the number of class(es) covered by the fee already paid, or (2) pay the required fee for each additional class(es). 37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1401.04, 1401.04(b) and 1403.01.
The filing fee for adding classes to an application is as follows:
(1) $325 per class, when the fees are submitted with a response filed online via the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html; and
(2) $375 per class, when the fees are submitted with a paper response.
Consolidated Appropriations Act, 2005, Pub. L. 108-447.
If the applicant adds any classes, the applicant must submit a specimen showing use of the mark in each new class. 37 C.F.R. §2.86(a)(3); TMEP §§904.01(b) and 1403.01. The applicant must verify that the new specimen was in use in commerce on or before the application filing date with an affidavit or a declaration under 37 C.F.R. §2.20. 37 C.F.R. §2.59(a). If, however, the new specimen is of the same type as those already of record, the applicant need not verify the date of use.
The applicant must amend the application to include dates of first use and use in commerce for each class. 37 C.F.R. §2.86(a); TMEP §1403.01. If the dates differ from those already of record, the applicant must verify the amendment with an affidavit or a declaration under 37 C.F.R. §2.20. 37 C.F.R. §2.71(c).
The applicant must list the goods and services by international class number in ascending numerical order. TMEP §§801.01(b) and 1403.01.
The examining attorney herein makes FINAL his refusal with respect to this issue.
The nature of the service is not clear from the present record. In order to allow proper identification and classification of the services on which the applicant intends to use the mark, the applicant must submit samples of advertisements or promotional materials for services of the same type. If such materials are not available, the applicant must describe the nature, purpose and channels of trade of the services with which the applicant has asserted a bona fide intent to use the mark. 37 C.F.R. §2.61(b); TMEP §§814 and 1402.01(d).
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).
The examining attorney herein makes FINAL his refusal with respect to this issue.
The applicant must disclaim the descriptive wording “CUISINE” 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 subject matter of the applicant’s goods/services.
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 CUISINE apart from the mark as shown.
See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).
The examining attorney herein makes FINAL his refusal with respect to this issue.
Applicant must submit (1) a substitute specimen showing the mark as it is used in commerce in the sale or advertising of the services, and (2) a statement that “the substitute specimen was in use in commerce at least as early as the filing date of the application,” verified with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20. 37 C.F.R. §§2.56 and 2.59(a); TMEP §904.09.
The current specimen of record comprises a videotape and is unacceptable as evidence of actual service mark use because, although it show use of the mark with goods, it does not show proper use of the mark with the identified services. Examples of acceptable specimens for services are signs, photographs, brochures, website printouts or advertisements that show the mark used in the sale or advertising of the services. TMEP §§1301.04 et seq.
The examining attorney herein makes FINAL his refusal with respect to this issue.
If the applicant cannot comply with the requirement for submitting a new specimen for the 1(a) basis asserted, the applicant may substitute a different basis for filing if the applicant can meet the requirements for the new basis. See TMEP §§806.03 et seq.
In this case, the applicant may wish to amend the application to assert a 1(b) Intent to Use basis.
To base the application on a bona fide intention to use the mark in commerce, the applicant must submit the following statement:
The applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application since the filing date of the application.
This statement must be verified, i.e., supported either by an affidavit or by a declaration under 37 C.F.R. §§2.20 and 2.33. Trademark Act Section 1(b), 15 U.S.C. §1051(b); 37 C.F.R. §2.34(a)(2)(i); TMEP §806.01(b).
If applicant fails to respond to this final action within six months of the mailing date, the application will be abandoned. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a). Applicant may respond to this final action by:
(1) submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); and/or
(2) filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).
In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2). 37 C.F.R. §2.64(a). See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matters. The petition fee is $100. 37 C.F.R. §2.6(a)(15).
/William H. Dawe III/
Trademark Attorney
Law Office 108
(571) 272-9337 voice
(571) 273-9337 fax
HOW TO RESPOND TO THIS OFFICE ACTION:
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.
cui·sine
cui·sine (kwî-zên¹)
noun
1. A characteristic manner or style of preparing food: Spanish cuisine.
2. Food; fare.
[French, from Old French, from Vulgar Latin *cocìna, variant of Latin coquìna, kitchen, cookery, from coquere, to cook.][1]
teen1
teen (tên) noun
1. teens. a. The numbers 13 through 19. b. The 13th through 19th items in a series or scale, as years of a century or degrees of temperature.
2. A teenager.
adjective
Teenage.[2]
[1]The American Heritage® Dictionary of the English Language, Third Edition copyright © 1992 by Houghton Mifflin Company. Electronic version licensed from INSO Corporation; further reproduction and distribution restricted in accordance with the Copyright Law of the United States. All rights reserved.
[2]The American Heritage® Dictionary of the English Language, Third Edition copyright © 1992 by Houghton Mifflin Company. Electronic version licensed from INSO Corporation; further reproduction and distribution restricted in accordance with the Copyright Law of the United States. All rights reserved.