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: 11/20/2008

 

In the office action dated 04/03/07 the examining attorney suspended this application pending the disposition of Application Serial No(s). 78916938.

 

Application Serial No(s). 78916938. has now abandoned.  Therefore Application Serial No(s) 77100165 – FRESH SET is removed from suspension. 

 

Upon further consideration, the assigned examining attorney has reviewed the referenced application and determined the following.  Every attempt is made to address all relevant issues in the first examination of trademark applications.  The examining attorney regrets any inconvenience to the applicant at this time.

 

Section 2(e)(1) - General Refusal – Descriptive

 

***THIS REFUSAL APPLIES TO CLASS 021 ONLY***

 

Registration is refused because the applied-for mark merely describes a characteristic 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.

 

General Principles Applicable to Section 2(e)(1) Cases

 

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods and/or services.  TMEP §1209.01(b); see In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005); In re Gyulay, 820 F.2d 1216, 1217-18, 3 USPQ2d 1009, 1010 (Fed. Cir. 1987).  Moreover, a mark that identifies a group of users to whom an applicant directs its goods and/or services is also merely descriptive.  TMEP §1209.03(i); see In re Planalytics, Inc., 70 USPQ2d 1453, 1454 (TTAB 2004).

 

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).

 

Applicant’s Mark

 

Applicant’s mark is FRESH SET, in STANDARD CHARACTER MARK format. 

 

Applicant seeks registration for the goods:

 

IC 007. US 013 019 021 023 031 034 035. G & S: Vacuum pumps

 

IC 021. US 002 013 023 029 030 033 040 050. G & S: Containers for household and kitchen use, not of metal; vacuum-sealed containers for food and beverage; insulated containers for food; cooking pot sets

 

Analysis

 

The term FRESH SET is descriptive when used in relation to applicant’s goods. 

 

FRESH is defined as “not stale or spoiled.”  SET is defined as “a group of similar things that belong together in some way.”  See attached dictionary evidence.  Therefore, as used by the applicant FRESH SET merely describes a characteristic of applicant’s goods, namely, a set of goods used to keep items fresh.  Please see identification of goods above which describes applicant’s goods in part as follows:   cooking pot sets.  [Emphasis added.]

 

Furthermore, attached internet evidence displays Applicant’s descriptive use of the term FRESH as follows:

 

“The unique Braun Multiquick fresh system is tough and versatile enough to use everyday. Multiquick fresh system lets you blend, chop, mix and whisk delicious meals and drinks quickly and easily.

 

From now on it will also keep your food fresh and tasty for longer. By extracting and keeping air out, it maintains the freshness and goodness of your food longer than without vacuum preservation - ranging from fresh ingredients to your favorite finished meal. The versatile Braun fresh ware containers are made of heat resistant glass and can be taken directly from the fridge to the oven or microwave. Ideal companions for preparation, preservation, heating and serving your favorite meals.”  [Emphasis added.]

 

“Produce Keeper

Produce stays fresh longer with this container.

 

The perfect environment for produce—this container lets air circulate and controls the moisture level! Just use this container to rinse and store all kinds of fruits and vegetables to keep them at their freshest.” [Emphasis added.]

 

Moreover, please see attached third party registrations demonstrating the descriptiveness of the term “FRESH” with goods in the nature of applicant’s in this case.  See attached. 

 

Finally, a mark that combines descriptive words is generally not registrable unless the composite creates a unitary mark with a unique, non-descriptive meaning or commercial impression.  See In re Tower Tech, Inc., 64 USPQ2d 1314 (TTAB 2002) (holding SMARTTOWER merely descriptive of “commercial and industrial cooling towers and accessories therefor, sold as a unit”); In re Sun Microsystems, Inc., 59 USPQ2d 1084 (TTAB 2001) (holding AGENTBEANS merely descriptive of “computer software for use in the development and deployment of application programs on a global computer network”); In re Shiva Corp., 48 USPQ2d 1957 (TTAB 1998) (holding TARIFF MANAGEMENT merely descriptive for “computer hardware and computer programs to control, reduce and render more efficient wide area network (WAN) usage and printed user manuals sold therewith”); In re Putnam Publ’g Co., 39 USPQ2d 2021 (TTAB 1996) (holding FOOD & BEVERAGE ON-LINE merely descriptive of “a news and information service updated daily for the food processing industry, contained in a database”); In re Copytele, Inc., 31 USPQ2d 1540 (TTAB 1994) (holding SCREEN FAX PHONE merely descriptive of “facsimile terminals employing electrophoretic displays”); TMEP §1209.03(d).

 

Here, applicant’s mere combination of the descriptive words “FRESH” and “SET” does not automatically create a new nondescriptive word or phrase.  A new and different commercial impression is not created nor is there an incongruous meaning as used in connection with applicant’s goods.  No imagination is required to understand the nature of applicant’s identified goods as being a set of goods used to keep items fresh.

 

Therefore, registration is refused because the applied-for mark merely describes a characteristic of Applicant’s goods.

 

Failure to Respond – Abandonment of Class(es) (Advisory)

 

If applicant does not respond to this Office action within the six-month period for response, then International Class 021 will be deleted from the application and the application will proceed forward for International Class 007 only.  37 C.F.R. §2.65(a).

 

If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.

 

 

 

 

 

/Paul A. Moreno/

United States Patent and Trademark Office

Trademark Attorney

Law Office 103

571-272-2651

 

 

RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.gov.uspto.report/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail.  For technical assistance with the form, please e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned examining attorney.  Do not respond to this Office action by e-mail; 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.

 

 

 

 

 

                                                                

IMPORTANT NOTICE

USPTO OFFICE ACTION HAS ISSUED ON 11/20/2008 FOR

APPLICATION SERIAL NO. 77100165

 

Please follow the instructions below to continue the prosecution of your application:

  

VIEW OFFICE ACTION: Click on this link http://tmportal.gov.uspto.report/external/portal/tow?DDA=Y&serial_number=77100165&doc_type=OOA&mail_date=20081120 (or copy and paste this URL into the address field of your browser), or visit http://tmportal.gov.uspto.report/external/portal/tow and enter the application serial number to access the Office action.

 

PLEASE NOTE: The Office action may not be immediately available but will be viewable within 24 hours of this notification.

 

RESPONSE MAY BE REQUIRED: You should carefully review the Office action to determine (1) if a response is required; (2) how to respond; and (3) the applicable response time period. Your response deadline will be calculated from 11/20/2008.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System response form at http://www.gov.uspto.report/teas/eTEASpageD.htm.

 

HELP: For technical assistance in accessing the Office action, please e-mail

TDR@uspto.gov.  Please contact the assigned examining attorney with questions about the Office action. 

 

        WARNING

1. The USPTO will NOT send a separate e-mail with the Office action attached.

 

2. Failure to file any required response by the applicable deadline will result in the ABANDONMENT of your application.