To: | Buffalo Wild Wings, Inc. (IP@fredlaw.com) |
Subject: | TRADEMARK APPLICATION NO. 78751322 - MANGO HABANERO - 33704.1000 |
Sent: | 5/19/2006 11:27:21 AM |
Sent As: | ECOM106@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 |
UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 78/751322
APPLICANT: Buffalo Wild Wings, Inc.
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: MANGO HABANERO
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CORRESPONDENT’S REFERENCE/DOCKET NO: 33704.1000
CORRESPONDENT EMAIL ADDRESS: |
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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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 78/751322
The assigned trademark examining attorney has reviewed the referenced application and has determined the following:
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.
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. §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 and/or services. 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).
A mark that combines descriptive terms may be registrable if the composite creates a unitary mark with a separate, nondescriptive meaning. However, if each component retains its descriptive significance in relation to the goods or services, the combination results in a composite that is itself descriptive. In re Tower Tech, Inc., 64 USPQ2d 1314 (TTAB 2002) (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) (AGENTBEANS merely descriptive of computer software for use in development and deployment of application programs on global computer network); In re Putman Publishing Co., 39 USPQ2d 2021 (TTAB 1996) (FOOD & BEVERAGE ONLINE held to be merely descriptive of news and information service for the food processing industry); In re Copytele Inc., 31 USPQ2d 1540 (TTAB 1994) (SCREEN FAX PHONE merely descriptive of “facsimile terminals employing electrophoretic displays”); In re Entenmann’s Inc., 15 USPQ2d 1750 (TTAB 1990), aff’d per curiam, 928 F.2d 411 (Fed. Cir. 1991) (OATNUT held to be merely descriptive of bread containing oats and hazelnuts).
The proposed mark merely describes the flavor of applicant’s food product. In re Andes Candies Inc., 178 USPQ 156 (C.C.P.A. 1973) (CRÈME DE MENTHE held to be merely descriptive of “laminated chocolate mint candy squares”); In re International Salt Company, 171 USPQ 832 (TTAB 1971) (CHUNKY CHEESE held to be merely descriptive of cheese-flavored salad dressing). See A. J. Canfield Co. v. Honickman, et al., 808 F.2d 291, 1 USPQ2d 1364 (3rd Cir. 1986) (CHOCOLATE FUDGE held to be generic for chocolate fudge flavored diet soda).
Applicant seeks registration of MANGO HABANERO for flavored sauces. “Mango” is a tropical fruit with a sweet flavoring. “Habanero” is a chili pepper with spicy flavoring. Both terms merely describe an ingredient and/or characteristic of applicant’s goods because they describe the flavors of the sauces. The combination of these two terms does not alter the descriptive significance in relation to the goods. See attached Internet evidence for definitions.
Printouts of articles downloaded from the Internet are admissible as evidence of information available to the general public, and of the way in which a term is being used by the public. TMEP §710.01(b). In re Total Quality Group Inc., 51 USPQ2d 1474, 1475-76 (TTAB 1999); Raccioppi v. Apogee Inc., 47 USPQ2d 1368, 1370-1 (TTAB 1998).
Although the trademark examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
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.
/Dannean J Hetzel/
Trademark Examining Attorney
Law Office 106
Phone - 571-272-8858
Fax - 571-273-9106
HOW TO RESPOND TO THIS OFFICE ACTION:
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.
Note:
In order to avoid size limitation constraints on large e-mail messages, this Office Action has been split into 2 smaller e-mail messages. The Office Action in its entirety consists of this message as well as the following attachments that you will receive in separate messages:
Email 1 includes the following 4 attachments
1. Mango-01
2. Mango-11
3. Mango2-1
4. mango3-1
Email 2 includes the following 5 attachments
1. hab-1
2. hab2-1
3. hab3-1
4. hab3-2
5. hab4
Please ensure that you receive all of the aforementioned attachments, and if you do not, please contact the assigned-examining attorney.