Offc Action Outgoing

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. 

 

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  77/002713

 

TEAS PLUS APPLICANTS MUST SUBMIT DOCUMENTS ELECTRONICALLY OR SUBMIT FEE:  TEAS Plus applicants should submit the following documents using the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html:  (1) written responses to Office actions; (2) preliminary amendments; (3) changes of correspondence address; (4) changes of owner’s address; (5) appointments and revocations of attorney; (6) amendments to allege use; (7) statements of use; (8) requests for extension of time to file a statement of use, and (9) requests to delete a §1(b) basis.  If any of these documents are filed on paper, they must be accompanied by a $50 per class fee.  37 C.F.R. §§2.6(a)(1)(iv) and 2.23(a)(i).  Telephone responses will not incur an additional fee.  NOTE:  In addition to the above, applicant must also continue to accept correspondence from the Office via e-mail throughout the examination process in order to avoid the additional fee.  37 C.F.R. §2.23(a)(2).

 

The assigned trademark examining attorney has reviewed the referenced application filed on September 19, 2006, and has determined the following.

 

No Conflicting Marks Noted

 

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.

 

Mark is Merely Descriptive

 

The examining attorney refuses registration on the Principal Register because the proposed mark merely describes the goods.  Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1); TMEP section 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 section 1209.01(b).

 

It is not necessary that a term describe all of the purposes, functions, characteristics or features of the goods to be merely descriptive.  It is enough if the term describes one attribute of the goods.  In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973).

 

The applicant applied to register the mark POLYNESIAN for “Bath oils for cosmetic purposes; Body and beauty care cosmetics; Cleansing creams; Cosmetic creams; Cosmetic creams for skin care; Cosmetic milks; Cosmetic oils; Cosmetic oils for the epidermis; Cosmetic preparations for body care; Cosmetic preparations for skin renewal; Cosmetic rouges; Cosmetic soaps; Cosmetics; Face creams for cosmetic use; Nutritional oils for cosmetic purposes; Perfume oils for the manufacture of cosmetic preparations; Shampoos; Soaps; Toners; Topical skin sprays for cosmetic purposes.”

 

The applicant’s mark is descriptive of the goods because it describes a feature or characteristic of the goods offered—namely, the way in which the personal care products are designed with Polynesian botanicals, or various herbs and other products originating in Polynesia.

 

The term “POLYNESIAN” is a commonly used term of art in the personal hair/skin care industry to reference  a certain type of product (see attached).

 

Since POLYNESIAN is a descriptive term of art in the relevant industry, the term is merely descriptive within the meaning of Section 2(e)(1) of the Trademark Act because the average prospective purchaser of the goods/services, when encountering the mark in connection with the goods/services, would immediately perceive a feature of the goods/services.  In re Omaha National Corporation 2 USPQ2d 1859 (Fed. Cir. 1987).

 

 

Thus, since applicant’s goods contain ingredients of Polynesian origin or ingredients often associated with Polynesia,  the mark “POLYNESIAN” merely describes a characteristic or quality of applicant’s goods.

 

Accordingly the mark is refused registration on the Principal Register under Section 2(e)(1).

 

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 to the refusal to register, the applicant must also respond to the following issues.

 

Mark is Deceptively Misdescriptive

 

Applicant must indicate if the goods referenced in the application contain ingredients or products from Polynesia.

 

In the alternative, if applicant’s goods do not contain Polynesian ingredients, the examining attorney refuses registration on the Principal Register because the mark is deceptively misdescriptive of the goods.  Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1); TMEP section 1209.04.

 

A mark is deceptively misdescriptive if it describes an ingredient, quality, characteristic, function or feature of the relevant goods and/or services, and the description conveyed by the mark is both false and plausible.  In re Woodward & Lothrop Inc., 4 USPQ2d 1412 (TTAB 1987) (CAMEO held deceptively misdescriptive of jewelry); In re Ox‑Yoke Originals, Inc., 222 USPQ 352 (TTAB 1983) (G.I. held deceptively misdescriptive of gun cleaning patches, rods, brushes, solvents and oils); TMEP §1209.04.

 

The Trademark Act does not prohibit the registration of misdescriptive terms unless consumers who encounter the mark are likely to believe the misrepresentation.  Binney & Smith Inc. v. Magic Marker Industries, Inc., 222 USPQ 1003 (TTAB 1984); TMEP §1209.04.

 

The test for deceptive misdescriptiveness has two parts:  (1) whether the mark misdescribes a characteristic, quality, function, composition or use of the goods or services; and if so, (2) would consumers be likely to believe the misrepresentation.  See In re Berman Bros. Harlem Furniture Inc., 26 USPQ2d 1514 (TTAB 1993); In re Woodward & Lothrop Inc., 4 USPQ2d 1412 (TTAB 1987); In re Quady Winery, Inc., 221 USPQ 1213 (TTAB 1984).

 

Marks that have been refused registration pursuant to §2(e)(1) on the ground of deceptive misdescriptiveness may be registrable under §2(f) upon a showing of acquired distinctiveness, or on the Supplemental Register.  15 U.S.C. §§1052(f) and 1091.  Marks that are deceptive under §2(a) are not registrable on either the Principal Register or the Supplemental Register under any circumstances.

 

 

 

Entity-Indefinite

 

Applicant’s entity type is specified inconsistently in the application, and clarification is required.  The name of an individual person appears in the “Applicant’s Name” section of the application, but the entity type is set forth as a limited liability company.  TMEP §803.03.

 

If applicant is an individual and the owner of the mark, then applicant may simply request that the entity be amended to “individual” and indicate its country of citizenship for the record.  15 U.S.C. §1051(a)(2); 37 C.F.R. §2.32(a)(3)(i); TMEP §§803.02(a) and 1201.02(c).  Alternatively, if applicant is in fact a limited liability company, the correct name of the limited liability company (and U.S. state or foreign country of incorporation or organization) should be set forth.  TMEP §§803.02(c) and 803.03(c).

 

If, in response to the above request, applicant provides information indicating that it is not the owner of the mark, then the trademark examining attorney will refuse registration under Trademark Act Section 1, 15 U.S.C. §1051, because the application was void as filed.  Only the owner of a mark may apply to register the mark.  TMEP §§803.01, 803.06, and 1201.02(b).

 

Procedure to Respond

 

The applicant may wish to hire a trademark attorney because of the technicalities involved in the application.  The Patent and Trademark Office cannot aid in the selection of an attorney.

 

The following authorities govern the processing of trademark and service mark applications:  The Trademark Act, 15 U.S.C. Section 1051 et seq., the Trademark Rules of Practice, 37 C.F.R. Part

2, and the Trademark Manual of Examining Procedure (TMEP).

 

“TMEP” refers to the Trademark Manual of Examining Procedure (3d ed. rev 2 April 2003), available by subscription from the Superintendent of Documents, U.S. Government Printing Office, P.O. Box 371954, Pittsburgh, PA 15250-7954.  The stock number is 903-010-00000-2.  The price is $44.00 ($55.00 for foreign mailing).  Orders may also be placed, using MASTERCARD® or VISA®, by calling (202) 512-1800.  The TMEP is also available on the PTO’s home page at www.uspto.gov.

 

If the applicant is not submitting a fee with the response, the applicant should include the following in the mailing address to ensure proper handling:  1) the words "Box 5" and 2) the law office number of the assigned examining attorney.

 

Status Check

 

To check status information, please use either http://tarr.uspto.gov, or call 703-305-8747 (Monday-Friday, 6:30 a.m. to 12 midnight, EST).  If additional information regarding the status of an application or registration is required, callers may telephone the Trademark Assistance Center (TAC) at (703) 308-9000 or (800) 786-9199 and request a status check.  TAC is open from 8:30 a.m. to 5:00 p.m. Eastern Standard Time, Monday through Friday, except on holidays.

 

Copies of Documents 

 

The applicant may view and download any or all documents contained in the electronic file wrapper of all pending trademark applications, as well as many registrations via the Trademark Document Retrieval (TDR) system available online at: http://portal.gov.uspto.report/external/portal/tow.  Currently, you can access all pending applications and all Madrid Protocol filings, and also many registrations, via TDR.  The USPTO is in the process of converting all remaining registrations into a digital format, to permit future TDR access.  This conversion process is expected to take several years.

 

Downloads are converted into PDF format and may be viewed with any PDF viewer, including the free Adobe Reader.

 

 

 

/James Ringle/

Trademark Attorney

Law Office 111

(571) 272-9393

jim.ringle@uspto.gov

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• 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.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

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.