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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  78/751322

 

This letter responds to applicant’s communication on November 11, 2006.  In the aforementioned communication, applicant requested registration on the Supplemental Register and submitted an Amendment to Allege Use. 

 

The specimen of record is unacceptable and applicant’s request to seek registration on the Supplemental Register is denied.  Applicant has raised two new issues, therefore the refusal to register is MAINTAINED AND CONTINUED.

 

Trademark Act Section 23:  Generic Refusal

 

Registration is refused on the Supplemental Register because the proposed mark is generic for applicant’s goods.  Trademark Act Section 23(c), 15 U.S.C. §1091(c); See In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987) (SCREENWIPE held generic as applied to premoistened antistatic cloths for cleaning computer and television screens); In re Northland Aluminum Products, Inc., 777 F.2d 1556, 227 USPQ 961 (Fed. Cir. 1985) (BUNDT, a term that designates a type of cake, held generic for ring cake mix); In re Central Sprinkler Co., 49 USPQ2d 1194 (TTAB 1998) (ATTIC generic for sprinklers installed primarily in attics); In re Stanbel Inc., 16 USPQ2d 1469 (TTAB 1990), aff’d, 20 USPQ2d 1319 (Fed. Cir. 1991) (ICE PAK for reusable ice substitute for use in food and beverage coolers held generic; even assuming a contrary holding, evidence submitted by applicant deemed insufficient to establish acquired distinctiveness); In re Analog Devices Inc., 6 USPQ2d 1808 (TTAB 1988), aff’d, 871 F.2d 1097, 10 USPQ2d 1879 (Fed. Cir. 1989) (ANALOG DEVICES held generic for devices having analog capabilities); TMEP §§1209.01(c) et seq.

 

Generic terms are terms that the relevant purchasing public understands primarily as the common or class name for the goods or services.  In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807 (Fed. Cir. 2001); In re American Fertility Society, 188 F.3d 1341, 51 USPQ2d 1832 (Fed. Cir. 1999); In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed. Cir. 1987); H. Marvin Ginn Corp. v. Int'l Ass'n of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986).  Generic terms are by definition incapable of indicating a particular source of the goods or services, and cannot be registered as trademarks; doing so “would grant the owner of the mark a monopoly, since a competitor could not describe his goods as what they are.” In re Merrill Lynch, 828 F.2d at 1569, 4 USPQ2d at 1142.

 

A two-part test is used to determine whether a designation is generic:

 

(1) What is the class or genus of goods or services at issue?

 

(2) Does the relevant public understand the designation primarily to refer to that class or genus of goods or services?

 

See H. Marvin Ginn Corp. v. International Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986); TMEP §1209.01(c)(i).

 

A term that serves as the common descriptor of a key ingredient, characteristic or feature of the goods is also generic and thus incapable of distinguishing source.  A term need not relate solely to the name of the goods or services in order to be held incapable of serving as an indicator of origin.  A.J. Canfield Co. v. Honickman, 808 F.2d 291, 1 USPQ2d 1364 (3rd Cir. 1986) (CHOCOLATE FUDGE generic for diet sodas); Miller Brewing Co. v G. Heileman Brewing Co., 561 F.2d 75, 80, 195 USPQ 281, 285 (7th Cir. 1977) (LITE generic for beer), cert. denied, 434 U.S. 1025, 196 USPQ 592 (1978); In re Sun Oil Co., 426 F.2d 401, 165 USPQ 718 (C.C.P.A. 1970) (CUSTOM BLENDED generic for gasoline);  In re Helena Rubenstein, Inc., 410 F.2d 438, 161 USPQ 606 (C.C.P.A. 1969) (PASTEURIZED for face cream incapable); Roselux Chemical Co, Inc. v. Parsons Ammonia Co., Inc., 299 F.2d 855, 132 USPQ 627 (C.C.P.A. 1962) (SUDSY generic for ammonia); In re Reckitt & Colman, North America Inc., 18 USPQ2d 1389 (TTAB 1991) (PERMA PRESS generic for soil and stain removers); In re Ricci-Italian Silversmiths, Inc., 16 USPQ2d 1727 (TTAB 1990) (ART DECO generic for flatware); In re Bonni Keller Collections Ltd., 6 USPQ2d 1224 (TTAB 1987) (LA LINGERIE generic for stores that sell lingerie); In re National Patent Development Corp., 231 USPQ 823 (TTAB 1986) (ULTRA PURE for interferons for medical use incapable); In re Wickerware, Inc., 227 USPQ 970 (TTAB 1985) (WICKERWARE generic for mail order and distributorship services in the field of wicker furniture and accessories); In re Hask Toiletries, 223 USPQ 1254 (TTAB 1984) (HENNA 'N' PLACENTA generic of ingredients for hair conditioner); In re Bee Pollen From England Ltd., 219 USPQ 163 (TTAB 1983) (BEE POLLEN FROM ENGLAND for bee pollen incapable).

 

Applicant seeks registration of MANGO HABANERO for flavored sauces.  “Mango habanero” is a common food or sauce flavoring that combines the flavors of a mango and a habanero to create a sweet and spicy food sauce.  This term is used extensively with flavored sauces and salsas.  “Mango habanero” is used generically to refer to a specific type of flavored sauce.  It is incapable of distinguishing applicant’s goods because consumers would not recognize it as a source indicator but rather as the common name of the type of flavored sauce.  Applicant’s own website prominently displays the proposed mark with other common generic sauces, such as honey and hot barbeque.  

 

See attached evidence demonstrating the generic use of “mango habanero” to refer to the actual flavored sauce.  Also see Office action May 19, 2006 for additional evidence.  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 chooses to respond to the refusal to register, then applicant must also respond to the following refusal.

 

Specimen Refusal

 

The specimen is not acceptable because, although identified as a webpage, it does not show the mark in close proximity to a picture of the goods, the necessary ordering information, or a weblink for ordering the goods and thus is not a proper display associated with the goods.  Trademark Act Section 45, 15 U.S.C. §1127; 37 C.F.R. §2.56(b)(1); TMEP §§904.06(a)-(b). 

 

A printed or web catalog, web page, or similar specimen is acceptable to show trademark use as a display associated with the goods only if it includes (1) a picture of the relevant goods, (2) the mark appearing sufficiently near the picture of the goods so as to associate the mark with the goods, and (3) information necessary to order the goods (e.g., sales form, price list, instructions for ordering, etc.) or a visible weblink to order the goods.  Lands’ End, Inc. v. Manbeck, 797 F. Supp. 511, 514, 24 USPQ2d 1314, 1316 (E.D. Va. 1992); In re Dell Inc., 71 USPQ2d 1725, 1727-1729 (TTAB 2004); In re MediaShare Corp., 43 USPQ2d 1304 (TTAB 1997); TMEP §§904.06(a) and (b).

 

Applicant has submitted two specimens, both websites.  The first specimen fails to show the proposed mark.  The second specimen shows the proposed mark, however it is unacceptable for several reasons.  First, it does not show the mark sufficiently near the picture of goods.  The goods are pictured at the top of the website and the proposed mark appears at the bottom of the website.  Second, it does not show the necessary ordering information.  Although the quantity can be entered, the specimen does not show any type of shopping cart that allows a purchaser to purchase the items. 

 

An amendment to allege use must include a specimen showing the applied-for mark in use in commerce for each class of goods specified in the amendment to allege use.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051-1052 and 1127; 37 C.F.R. §2.76(b)(2).

 

Therefore, applicant must submit the following:

 

(1)  A substitute specimen showing the mark in use in commerce for the goods specified in the amendment to allege use; and

 

(2)  The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “The substitute specimen was in use in commerce prior to the filing of the amendment to allege use.”  37 C.F.R. §2.59(b)(1).  If submitting a specimen requires an amendment to the dates of use, applicant must also verify the amended dates.  37 C.F.R. §2.71(c).

 

Examples of specimens for goods are tags, labels, instruction manuals, containers, or photographs that show the mark on the goods or packaging.  TMEP §§904.04 et seq.

 

If applicant cannot satisfy the above requirements, applicant can withdraw the amendment to allege use and assert use at a later date when appropriate specimens are available.  The fee for the amendment to allege use will not be refunded.  37 C.F.R. §2.76(h); TMEP §1104.10.  However, should applicant withdraw the amendment to allege use, registration cannot be granted until applicant amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen.  15 U.S.C. §1051(c); 37 C.F.R. §§2.76, 2.88; TMEP Chapter 1100. 

 

Pending a proper response, registration is refused because the specimen does not show the applied-for mark in use in commerce as a trademark.  15 U.S.C. §§1051-1052 and 1127; 37 C.F.R. §§2.56 and 2.76.

 

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:

• 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.

 

 

Note:

 

In order to avoid size limitation constraints on large e-mail messages, this Office Action has been split into 5 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. gourmetmik-1  

2. stwpatch-1   

3. stwpatch-2  

4. ttmhs-01  

 

Email 2 includes the following 5 attachments  

1. ttmhs-02  

2. ttmhs-08  

3. ncf-1  

4. ncf-4  

5. savvydiner-1  

 

Email 3 includes the following 6 attachments  

1. savvydiner-2  

2. canaanfarm-2  

3. talbot-1  

4. talbot-2  

5. melindas-1  

6. melindas-2  

 

Email 4 includes the following 2 attachments  

1. design-1  

2. design-5  

 

Email 5 includes the following 4 attachments  

1. design-6  

2. copa-1  

3. copa-2  

4. fodnetwork-1  

 

Please ensure that you receive all of the aforementioned attachments, and if you do not, please contact the assigned-examining attorney.