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  78/647323

 

The assigned examining attorney has reviewed the referenced application and determined the following.

 

NO CONFLICTING MARKS NOTED

 

The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.

 

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

 

Registration is refused because the proposed mark merely describes features 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).  A mark that describes an intended user of a product or service is also merely descriptive within the meaning of Section 2(e)(1).  Hunter Publishing Co. v. Caulfield Publishing Ltd., 1 USPQ2d 1996 (TTAB 1986); In re Camel Mfg. Co., Inc., 222 USPQ 1031 (TTAB 1984); In re Gentex Corp., 151 USPQ 435 (TTAB 1966).

 

The applicant seeks registration of  “HYDRATING MINT” for oral care products.

 

To “hydrate” something is to “cause to be hydrated; add water or moisture.” Ultralingua web, (2005).  “Mint” is defined as “an herb whose leaves have a clean smell and taste, used to flavor food, drinks, and candy.”  Cambridge Dictionary of American English, (2006).

 

It is likely the applicant’s goods are flavored with or like “mint” and that they are intended for use, at least in part, in causing the mouth or throat to be hydrated. The examining attorney refers to the attached website excerpts as evidence of the language “hydrating mint” used in a descriptive manner.  Accordingly, the proposed mark is merely descriptive for features or uses of the goods and registration must be refused 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.

 

Seeking Registration On The Supplemental Register: Even though 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), 15 U.S.C. §1051(b), and is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use under 37 C.F.R. §2.76 has been timely filed.  37 C.F.R. §2.47(d); TMEP §§815.02, 816.02 and 1102.03.

 

If the applicant files an amendment to allege use and also amends to the Supplemental Register, please note that the effective filing date of the application will then be the date of filing of the amendment to allege use.  37 C.F.R. §2.75(b); TMEP §§206.01 and 816.02.

 

If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informalities.

 

INFORMATION REQUIREMENT

 

In order to allow for proper examination of the application, including the final determination as to whether the mark is merely descriptive in relation to the goods, the applicant must submit samples of advertisements or promotional materials for the goods or, if unavailable, for goods of the same type.  If such materials are not available, the applicant must describe the nature, purpose and channels of trade of the goods identified in the application. 

 

In addition, the applicant must state whether the mark has any meaning in relation to the goods.  The applicant must specifically state whether the goods are intended for use in hydrating the mouth or throat or are intended for use in causing the mouth or throat to be hydrated.

 

37 C.F.R. §2.61(b); TMEP §§814 and 1402.01(d).

 

IDENTIFICATION AND CLASSIFICATION OF GOODS

 

The identification of goods is unacceptable as indefinite.  TMEP §1402.01.  The applicant must amend the application to identify the individual oral care products by their common commercial, or generic, names.  Note that the proper classification for the goods will be determined by the individual goods and the goods may fall in more than one class.  For example, toothpaste and mouthwash are classified in International Class 3, unless they are medicated, in which instance they are classified in International Class 5.  Toothbrushes and dental floss are classified in International Class 21, unless the dental floss is medicated in which instance it will be classified in International Class 5.  The applicant must either limit the goods to those falling in a single international class or add classes to the application.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §1401.04(b).

 

The applicant may adopt the following identification, if accurate:   

 

“oral care products, namely, ___________________ (identify individual goods by generic names, e.g., toothpaste, mouthwash),” (international class or classes determined by individual goods).

 

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.

 

MULTIPLE CLASS APPLICATION REQUIREMENTS

 

The application identifies goods that may be classified in two or more classes; however, the fees submitted are sufficient to cover one class only. 

 

The applicant must either:  (1) restrict the application to the single class covered by the fee already paid, or (2) submit the fees for the additional classes. 

 

If the applicant submits the outstanding fees with a paper response, then the applicant must submit $375 per class to cover the fees for the remaining classes.  However, if the applicant submits the fees in a response filed via the Trademark Electronic Application System (TEAS), then the applicant must submit $325 per class to cover the fees for the remaining classes.  37 C.F.R. §§2.6 and 2.86(a)(2); TMEP §§810, 1401.04, 1401.04(b) and 1403.01.

 

If the applicant prosecutes this application as a combined, or multiple-class application, then the applicant must comply with each of the following for those goods based on an intent to use the mark in commerce under Trademark Act Section 1(b) and/or a foreign registration under Trademark Act Section 44(e):

 

(1)   The applicant must list the goods by international class with the classes listed in ascending numerical order.  TMEP § 1403.01; and

 

(2)   The applicant must submit a filing fee for each international class of goods not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov).  37 C.F.R. §2.86(a)(2); TMEP §§810 and 1403.01.

 

APPLICATION FILED UNDER SECTIONS 1(b) AND 44(d) - COUNTRY OF ORIGIN

 

If the applicant intends to rely on the registration issuing from the identified foreign application as its basis for registration, then the applicant must provide evidence that China is a “country of origin,” i.e., that applicant has a bona fide and effective industrial or commercial establishment in China.  Trademark Act Section 44(c), 15 U.S.C. §1126(c); TMEP §§1002.01, 1002.02 and 1002.04.

 

The application record shows that the applicant is domiciled in the United States, but the foreign application on which applicant relies for priority was filed in China. 

 

An applicant domiciled in the United States may claim priority under §44(d) based on ownership of an application in a treaty country other than the United States, even if the other country is not the applicant's country of origin.  See In re ETA Systems Inc., 2 USPQ2d 1367 (TTAB 1987), dec. withdrawn on other grounds (TTAB, November 28, 1988); In re International Barrier Corp., 231 USPQ 310 (TTAB 1986).  See TMEP §1002.02.

 

However, an applicant domiciled in the United States may not obtain registration under §44(e) unless the applicant is the owner of a registration from an eligible country other than the United States and the applicant can establish that the foreign country is the applicant's country of origin.  In re International Barrier Corp., supra; In re Fisons, supra.  See TMEP §1002.01. 

 

TMEP section 1002.05.

 

Accordingly, if the applicant intends to rely on the registration issuing from the foreign application as a basis for registration, then the applicant must establish that the country in which the application was filed is its country of origin, i.e., that the applicant has a bona fide and effective industrial or commercial establishment in that country.

 

If applicant cannot establish that the country in which the foreign application was filed is the applicant’s country of origin, registration under §44(e) will be refused.  In such case, applicant may amend the application to rely solely on the applicant’s §1(b) a basis.  See 37 C.F.R. §2.35 and TMEP §§806.03 et seq. regarding amendment of the basis.  Where an applicant meets the requirements of §44(d) as of the filing date of the United States application, the applicant may retain the priority filing date without perfecting the §44(e) basis.  37 C.F.R. §§2.35(b)(4); TMEP §806.04(b).

 

Please note that while §44(d) provides a basis for filing and a priority filing date, it does not provide a basis for publication or registration.  A party who files under §44(d) must establish a basis for registration.  37 C.F.R. §2.34(a)(4)(iii); TMEP §§1002.02 and 1003.03.

 

Please also note that, if the applicant establishes that China is a country of origin and relies on the foreign registration as a basis for registration, then the application will not be approved for publication until a copy of the foreign registration and, if appropriate, an English translation signed by the translator, have been filed.  TMEP §§1004.01 and 1004.01(b).

 

APPLICANT’S CORRESPONDENCE ADDRESS

 

The applicant’s correspondence address appears to feature a typographical error.  The examining attorney refers to the word “Comopany” in “Colgate Palmolive Comopany.”  The applicant should simply amend the correspondence information to adopt the correct spelling.

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

 

/Martha L. Fromm/

Martha L. Fromm

Trademark Attorney

Law Office 106

Phone:  (571) 272-9320

Fax: (571) 273-9106 (formal responses)

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action has been issued via email, you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• 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 in your response.

 

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.