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, 2.65(a); TMEP §§711, 718.03.

 

Summary of Issues:

 

• Descriptiveness refusal
• Supplemental Register advisory
• Disclaimer on Supplemental Register
• Identification of goods

 

NO CONFLICTING MARKS NOTED

 

The Office records have been searched and there are no similar registered or pending marks that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.

 

Registration is refused, however, for the following reason:

SECTION 2(e)(1) REFUSAL – MARK IS MERELY DESCRIPTIVE

 

Registration is refused because the applied-for mark merely describes the function or purpose of applicant’s goods.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

 

A term is merely descriptive if it conveys an immediate idea of the ingredients, qualities, or characteristics of the identified goods and/or services.  See In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1422 (Fed. Cir. 2005); In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1346, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001).

 

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 Abcor Dev. Corp., 588 F.2d 811, 814, 200 USPQ 215, 218 (C.C.P.A. 1978); TMEP §1209.01(b); see, e.g., In re Polo Int’l Inc., 51 USPQ2d 1061 (TTAB 1999) (finding 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) (finding CONCURRENT PC-DOS merely descriptive of “computer programs recorded on disk” where relevant trade used the denomination “concurrent” as a descriptor of a particular type of operating system).  “Whether consumers could guess what the product is from consideration of the mark alone is not the test.”  In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).

 

In this case, the applicant seeks to register the mark HEARTBURN RELIEF 24 HOUR for NUTRITIONAL SUPPLEMENTS, PHARMACEUTICALS.  As the attached dictionary entries show, “heartburn” is defined as “a painful burning sensation in the chest caused by gastroesophageal reflux (backflow from the stomach irritating the esophagus); symptomatic of an ulcer or a diaphragmatic hernia or other disorder,” “relief” is defined as “the act of reducing something unpleasant (as pain or annoyance),” “24” is defined as “the cardinal number that is the sum of twenty-three and one” and “hour” is defined as “distance measured by the time taken to cover it.”  As the attached Internet evidence also shows, pharmaceuticals are often identified in relation to the number of hours they relieve particular symptoms, including heartburn.  For example, Prilosec is a heartburn medication and its website indicates that “some people get complete relief of symptoms within 24 hours.”  As another example, Prevacid is also a heartburn medication and its website indicates that gives users relief for a “full 24 hours.”  Similarly, Allegra is described as medication that provides “24-hour allergy relief.”  Therefore, the mark is descriptive of the goods in that they are likely to provide alleviation or relief of heartburn symptoms for a 24 hour period.

 

For the foregoing reasons, registration is refused pursuant to Section 2(e)(1) of the Trademark Act.  Although the examining attorney has refused registration, the applicant may present arguments or evidence in support of registration.

 

SUPPLEMENTAL REGISTER ADVISORY

 

Although an amendment to the Supplemental Register would normally be an appropriate response to this refusal, such a response is not appropriate in the present case.  The instant application was filed under Trademark Act Section 1(b) and is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use meeting the requirements of 37 C.F.R. §2.76(b), (c) has been timely filed.  37 C.F.R. §2.47(d); TMEP §§816.02, 1102.03.

 

If applicant files an acceptable allegation of use and also amends to the Supplemental Register, the effective filing date of the application will be the date on which applicant met the minimum filing requirements of 37 C.F.R. §2.76(e) for the amendment to allege use.  37 C.F.R. §2.75(b); TMEP §§816.02, 1102.03.  In addition, the undersigned trademark examining attorney will conduct a new search of the Office records for conflicting marks based on the later application filing date.  TMEP §§206.01, 1102.03.

 

DISCLAIMER ON SUPPLEMENTAL REGISTER

 

Applicant is advised that, if the application is amended to seek registration on the Supplemental Register, applicant must disclaim “HEARTBURN” and “24 HOUR” because such wording appears to be generic and/or informational in the context of applicant’s goods and/or services.  See 15 U.S.C. §1056(a); In re Wella Corp., 565 F.2d 143, 196 USPQ 7 (C.C.P.A. 1977); In re Creative Goldsmiths of Wash., Inc., 229 USPQ 766 (TTAB 1986); TMEP §1213.03(b).

 

The following is the standardized format for a disclaimer:

 

No claim is made to the exclusive right to use “HEARTBURN” and “24 HOUR” apart from the mark as shown.

 

TMEP §1213.08(a)(i).

 

IDENTIFICATION OF GOODS

 

The identification of goods reads as follows:  NUTRITIONAL SUPPLEMENTS, PHARMACEUTICALS.

 

The identification of goods must be clarified because the wording “pharmaceuticals” is indefinite in that it does not specify the types of pharmaceuticals or indicate the condition or disease being treated.  Therefore, applicant must amend this wording to specify the types of pharmaceuticals (e.g., analgesics) or by indicating the conditions or diseases being treated (e.g., gastrointestinal disorders).  See TMEP §1402.01.

 

Applicant may adopt the following identification of goods, if accurate: 

 

NUTRITIONAL SUPPLEMENTS, PHARMACEUTICALS FOR USE IN THE TREATMENT OF [SPECIFY, E.G., GASTROINTESTINAL DISORDERS, HEARTBURN], In International Class 5

 

 

See TMEP §1402.01.

 

Identifications of goods can be amended only to clarify or limit the goods; adding to or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.  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.

 

For assistance with identifying and classifying 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.  See TMEP §1402.04.

 

 

 

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

 

 

 

/Melissa Vallillo/

Trademark Examining Attorney

Law Office 113

(571) 272-5891

melissa.vallillo@uspto.gov (informal queries only)

 

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 the Trademark Electronic Application System (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 the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or 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/trademarks/teas/correspondence.jsp.