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  76/633508

 

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

 

Search Results

 

The Office records have been searched 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.

 

Substantive Refusal

 

Section 2(e)(1) - Descriptive Refusal

 

Registration is refused because the proposed mark merely describes the ingredients of applicant’s identified 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).

 

A term that describes an ingredient of the goods is merely descriptive, within the meaning of Section 2(e)(1).  In re Andes Candies Inc., 478 F.2d 1264, 178 USPQ 156 (C.C.P.A. 1973) (CREME DE MENTHE merely descriptive of candy); In re Keebler Co., 478 F.2d 1264, 178 USPQ 155 (C.C.P.A. 1973) (RICH ‘N CHIPS merely descriptive of chocolate chip cookies); In re Entenmann’s Inc., 15 USPQ2d 1750 (TTAB 1990), aff’d per curiam 928 F.2d 411 (Fed. Cir. 1991) (OATNUT merely descriptive of bread containing oats and hazelnuts); Flowers Industries, Inc. v. Interstate Brands Corp., 5 USPQ 2d 1580 (TTAB 1987) (HONEY WHEAT merely descriptive of bread containing honey and wheat); In re International Salt Co., 171 USPQ 832 (TTAB 1971) (CHUNKY CHEESE merely descriptive of cheese flavored salad dressing); In re Demos, 172 USPQ 408 (TTAB 1971) (CHAMPAGNE descriptive of ingredient of salad dressing).

 

Applicant’s mark, ACP, is merely descriptive because it merely describes the ingredients of the goods.  Applicant identified “vitamins” and other dietary and nutritional products that contain vitamins.  Vitamins A, C, and P are commonly sold together as ACP, and presumably are ingredients in applicant’s goods.  See attached evidence. 

 

Request for Information

 

The examining attorney requires information about the goods/services to make a final determination as to whether all or part of the mark is merely descriptive as applied to the goods/services.  Applicant must submit samples of advertisements or promotional materials and a photograph of the identified goods because the nature of the goods on which applicant intends to use its mark is not clear from the present record.  If such materials are not available, then applicant must submit samples of advertisements or promotional materials and a photograph of similar goods.  In addition, applicant must describe in some detail the nature, purpose and channels of trade of the goods listed in the application.  37 C.F.R. §2.61(b); TMEP §§814 and 1402.01(e).   Please specifically identify if Vitamins A, C, and P are present in applicant’s goods. 

 

In all cases, the submitted factual information must make clear how the goods/services operate, its salient features, and its prospective customer and/or channel of trade.  This information is not readily available to the examining attorney, and is pertinent to the descriptiveness determination.  Conclusory statements from the applicant or its attorney regarding the descriptiveness standard will not be sufficient to meet this requirement for information.

 

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).

 

Applicant’s Right to Respond

 

Although the trademark examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

 

Informalities

 

Identification of Goods

 

The wording “nutritional and dietary drinks” in the identification of goods needs clarification because it is too indefinite.   This wording does not identify the drinks with enough specificity (e.g., dietary supplemental drinks, dietary drink mix for use as a meal replacement).

 

The wording “ingredients used in diet products” in the identification of goods needs clarification because it is too indefinite and does not specify the particular ingredients or the type of dietary products.   Moreover, this wording could also cover goods and/or services in other International Classes.

 

Applicant may change this wording, if accurate, to:

 

“Nutritional supplements; dietary food supplements; vitamins; dietary drinks, namely, dietary supplemental drinks, and dietary drink mix for use as a meal replacement; nutritional drinks, namely, nutritionally fortified beverages, and nutritional shakes for use as a meal substitute; ingredients used in dietary products, namely, soy protein for use as a nutritional ingredient in various powdered and ready-to-drink beverages, and vitamin and mineral preparations for use as ingredients in the food and pharmaceutical industry” in International Class 005.

 

TMEP §1402.01.

 

Request for Information

 

If the suggested amendment to the identification is not acceptable:

 

Applicant must submit samples of advertisements or promotional materials and a photograph of the identified goods and/or services because the nature of the goods and/or services on which applicant intends to use its mark is not clear from the present record.  If such materials are not available, then applicant must submit samples of advertisements or promotional materials and a photograph of similar goods and/or services.  In addition, applicant must describe in some detail the nature, purpose and channels of trade of the goods and/or services listed in the application.  37 C.F.R. §2.61(b); TMEP §§814 and 1402.01(e).  Please specifically indicate the particular types of nutritional drinks and dietary drinks.  Also, please specifically indicate the particular types of ingredients and the types of dietary products the ingredients are to be used in.

 

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). 

 

Manual of Acceptable Identifications

 

For assistance with identifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.

 

Scope

 

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

 

 

/Jay C Besch/

Jay C. Besch

USPTO

Trademark Examining Attorney

Law Office 108

(571) 272-8606

 

 

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 has been 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.