UNITED STATES PATENT AND TRADEMARK OFFICE

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.

 

ISSUE/MAILING DATE:

 

Section 2(a) Deceptive Material Content Refusal

 

Registration is refused because the proposed mark is deceptive.  Trademark Act Section 2(a), 15 U.S.C. §1052(a).  Specifically, the applicant’s mark is the term “DYANITE,” which refers to the phonetic equivalent of the rare mineral dianite and infers that the goods contain dianite.  Use of a term that is the phonetic equivalent of a deceptive term is also deceptive.  Tanner’s Council of America, Inc. v. Samsonite Corp., 204 USPQ 150, 154 (TTAB 1979).

 

This ingredient is important to a purchasing decision because it is a rare and valuable mineral that is incorporated in jewelry, is found in a single location in Siberia, and was named after the late Princess Diana.  See attached web page printouts.  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.

 

For example, “this beautiful material comes from the mine only in very small amounts.  Rough of good color is very rare and quite expensive.”  See attached web page printout from www.skylineminerals.com.  It is considered a valuable healing stone.  www.hehishelo.co.uk.  Dianite is “very rare and quite sought after,”  and “[t]he mine which produced these examples of dianite was a particularly small find which has now been exhausted.”  www.bonhams.com. 

 

This mineral is also used in jewelry.  For example, “Each of the listed amphibole-rich rocks has been fashioned into attractive cabochons and miscellaneous shaped pieces for jewelry.”  www.cst.cmich.edu.  The BBC states that the scientists who discovered the mineral intend to sell it as jewelry.  http://news.bbc.co.uk. 

 

A mark is deceptive if:

 

• the proposed mark consists of or contains a term that misdescribes the character, quality, function, or use of the goods or services of the applicant;
• prospective customers are likely to believe that the misdescription actually describes the goods or services; and
• the misdescription is likely to affect the decision to select or use the goods or services of applicant.

 

Trademark Act Section 2(a), 15 U.S.C. §1052(a); See In re Budge Mfg. Co., 857 F.2d 773, 8 USPQ2d 1259 (Fed. Cir. 1988).

 

If the goods do not, in fact, contain dianite, the proposed mark will deceive the purchasing public as to an important factor in its purchasing decision.  If the goods do contain dianite, the examining attorney cannot make a suggested amendment to the identification of goods due to the following refusal.

 

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, the applicant must also respond to the following requirements.

 

The applicant should note the following additional ground for refusal.

 

Section 2(e)(1) Merely Descriptive Refusal

 

Registration is refused because the proposed mark, DYANITE, merely describes a feature, ingredient and/or characteristic of the 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.  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). 

 

As the attached web page printouts show, dianite is a rare, royal blue mineral found only in one location in Siberia, Russia.  It is also incorporated in jewelry. 

 

The applicant’s misspelling of dianite as “DYANITE” does not obviate this refusal.  A novel spelling of a merely descriptive term is also merely descriptive if purchasers would perceive the different spelling as the equivalent of the descriptive term.  Andrew J. McPartland, Inc. v. Montgomery Ward & Co., Inc., 164 F.2d 603, 76 USPQ 97 (C.C.P.A. 1947), cert. denied, 333 U.S. 875,77 USPQ 676 (S. Ct. 1948) (“KWIXTART,” phonetic spelling of “quick start,” is descriptive of electric storage batteries); In re Hercules Fasteners, Inc., 203 F.2d 753, 97 USPQ 355(C.C.P.A. 1953) (“FASTIE,” as phonetic spelling of “fast tie,” connotes that which unites or joins quickly, and hence the notation is descriptive of the function and character of tube sealing machines); C-Thru Ruler Co. v. Needleman, 190 USPQ 93 (E.D. Pa. 1976) (C-THRU held to be the equivalent of “see-through” and therefore merely descriptive of transparent rulers and drafting aids); In re Hubbard Milling Co., 6 USPQ2d 1239 (TTAB 1987) (MINERAL-LYX held generic for mineral licks for feeding livestock); In re State Chemical Manufacturing Co., 225 USPQ 687 (TTAB 1985) (“FOM,” equivalent to word “foam,” is descriptive for foam rug shampoo); In re Stanbel Inc., 16 USPQ2d 1469 (TTAB 1990), aff’d, 20 USPQ2d 1319 (Fed. Cir. 1991) (ICE PAK held generic for ice packs); TMEP §1209.03(j).

 

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, the applicant must also respond to the following requirement.

 

Identification of Goods

 

The wording “Jewelry with Gemstones (synthetic, laboratory created, imitation)” in the identification of goods is indefinite because it must further specify the goods.  See specific suggestions below.  TMEP §§1402.01 and 1402.03. 

 

Generally, parentheses and brackets should not be used in identifications of goods and services.  The Post Registration Section of the Office uses single brackets to indicate that goods/services have been deleted from a registration either by amendment of a registration under 15 U.S.C. §1057, filing of a partial affidavit of continued use under 15 U.S.C. §1058, or filing of a partial renewal application under 15 U.S.C. §1059.  The Post Registration Section also uses double parentheses to indicate that certain goods or services are not claimed in an affidavit of incontestability under 15 U.S.C. §1065.  Therefore, to avoid confusion, applicants should not use parentheses and brackets in the identification of goods or services in an application.  TMEP §1402.12.  The applicant may adopt the following identification of goods, if accurate: 

 

Synthetic, laboratory created, man-made and imitation gemstones; jewelry with synthetic, laboratory created, imitation gemstones; earrings, pendants, rings, bracelets, necklaces, toe-rings, body jewelry, pierced jewelry, and jewelry of precious and non-precious metals; in International Class 14 

 

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 goods that are not within the scope of goods set forth in the present identification.

 

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. 

 

Trademark Counsel

 

The applicant may wish to hire a trademark attorney to assist in prosecuting this application because of the technicalities involved.  The Office cannot aid in the selection of a trademark attorney. 37 C.F.R. §2.11.  The applicant may wish to consult the Yellow Pages for a listing of attorneys specializing in trademark or intellectual property law, or seek guidance from its local Bar Association attorney-referral service.

 

 

/LeighLowry/

Leigh A. Lowry

Trademark Examining Attorney

U.S. Patent and Trademark Office

Law Office 115

(571) 272-9725

 

RESPOND TO THIS ACTION: If there are any questions about the Office action, please contact the assigned examining attorney. A response to this Office Action should be filed using the Office’s Response to Office action form available at http://www.gov.uspto.report/teas/eTEASpageD.htm.  If notification of this Office action was received via e-mail, no response using this form may be filed for 72 hours after receipt of the notification.  Do not attempt to respond by e-mail as the USPTO does not accept e-mailed responses.

 

If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response.  Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.

 

STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov.  When conducting an online status check, print and maintain a copy of the complete TARR screen.  If the status of your application has not changed for more than six months, please contact the assigned examining attorney.