UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

 

ISSUE/MAILING DATE:

 

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SEARCH OF OFFICE RECORDS – ADVISORY

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

 

However, applicant must respond to the following.

 

DECEPTIVENESS OF MARK – REFUSAL

Registration is refused because the applied-for mark consists of or includes deceptive matter in relation to the identified goods.  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); In re Phillips-Van Heusen Corp., 63 USPQ2d 1047 (TTAB 2002); In re Organik Techs., Inc., 41 USPQ2d 1690 (TTAB 1997); TMEP §1203.02.

 

A mark is deceptive if the following criteria are met:

 

(1)  The applied-for mark consists of or contains a term that misdescribes the character, quality, function, composition, or use of the goods;

 

(2)  Prospective purchasers are likely to believe that the misdescription actually describes the goods; and

 

(3)  The misdescription is likely to affect a significant portion of the relevant consumers’ decision to purchase the goods.

 

See In re Budge, 857 F.2d at 775, 8 USPQ2d at 1260; In re ALP of S. Beach Inc., 79 USPQ2d 1009, 1010 (TTAB 2006); TMEP §1203.02(b); see also In re Spirits Int’l, N.V., 563 F.3d 1347, 1353, 1356, 90 USPQ2d 1489, 1492-93, 1495 (Fed. Cir. 2009) (holding that the test for materiality incorporates a requirement that a “significant portion of the relevant consumers be deceived”).

 

In this case, applicant’s mark includes the wording “FERRIC,” which indicates that the goods contain iron.  The wording “ferric” is defined as “containing iron” and the use of this wording would merely indicate to consumers that the goods contain iron.  This ingredient is important to a significant portion of the relevant consumers’ purchasing decision because iron content in oral supplements is effective in treating iron deficiency in the blood.  See Exhibits A and B. 

If the goods do not, in fact, contain iron, the applied-for mark will deceive the public as to a material factor in its purchasing decision.  See TMEP §1203.02(c).  If the goods do contain iron, applicant must amend the identification of goods to state this fact, and the refusal will be withdrawn.  See TMEP §1203.02(e)(ii), (f)(i).  Applicant may adopt the following identification of goods, if accurate: Pharmaceuticals in the nature of dietary iron supplements for medical use.

 

REQUEST FOR MORE INFORMATION

The nature of the goods on which applicant intends to use or is using its mark is not clear from the present record and additional information is required.  To permit proper examination of the application, applicant must provide the following:

 

(1)  A written statement explaining whether the goods are or will contain iron;

(2)  A written statement explaining whether the goods are or will contain water;

(3)  A sample of advertisements or promotional materials featuring the goods and/or a photograph of the identified goods, or if such materials are not available, applicant must submit samples of advertisements or promotional materials and a photograph of similar goods; and 

(4)  A written statement describing in detail the nature, purpose and channels of trade of the goods.

 

See 37 C.F.R. §2.61(b); In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701-02 (TTAB 2003); TMEP §§814, 1402.01(e). 

 

Failure to respond to a request for information can be grounds for refusing registration.  TMEP §814; see In re Cheezwhse.com, 85 USPQ2d at 1919; In re DTI P’ship, 67 USPQ2d at 1701-02.  Merely stating that information about the goods or services is available on applicant’s website is an inappropriate response to a request for additional information, and is insufficient to make the relevant information of record.  See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).

 

EXPLANATION OF MARK’S SIGNIFICANCE REQUIRED

Applicant must specify whether the wording “AQUA” has any significance in the supplement trade or industry or as applied to the goods described in the application, or if such wording is a “term of art” within applicant’s industry.  See 37 C.F.R. §2.61(b); TMEP §§808.01(a), 814. 

 

Applicant must also state whether the goods contain water.

 

Failure to respond to a request for information is an additional ground for refusing registration.  See In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701 (TTAB 2003); TMEP §814.

 

 

 

 

 

/Sean Crowley/

Examining Attorney

Law Office 116

U.S. Patent and Trademark Office

phone: 571.272.8851

email: sean.crowley@uspto.gov

 

TO RESPOND TO THIS LETTER:  Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

 

All informal e-mail communications relevant to this application will be placed in the official application record.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/.  Please keep a copy of the complete TARR screen.  If TARR shows no change for more than six months, call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/teas/eTEASpageE.htm.