[Important Email Information]

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  78/948734

 

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

 

Search Results

 

The Office records have been searched and no similar registered mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.

 

However, applicant should note the following prior pending application(s).

 

Possible Likelihood of Confusion Refusal

 

Information regarding pending Application Serial No. 78034003 is enclosed.  The filing date of the referenced application precedes applicant’s filing date.  There may be a likelihood of confusion between the two marks under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  If the referenced application registers, registration may be refused in this case under Section 2(d).  37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon entry of a response to this Office action, action on this case may be suspended pending final disposition of the earlier-filed application.

 

If applicant believes there is no potential conflict between this application and the earlier-filed application, then applicant may present arguments relevant to the issue in a response to this Office action.  The election not to submit arguments at this time in no way limits applicant’s right to address this issue at a later point.

 

Applicant should also note the following ground for refusal of registration.

 

Section 2(e)(1) - Descriptive Refusal

 

Registration is refused because the proposed mark NATURAL IONIC ENERGY merely describes a feature of applicant’s goods and/or services.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §§1209 et seq.   Moreover, the proposed mark appears to be generic for a feature of the goods and, therefore, incapable of functioning as a source-identifier for applicant’s goods.  In re Academy of Facial Plastic and Reconstructive Surgery, 64 USPQ2d 1748 (TTAB 2002); In re A La Vieille Russie, Inc., 60 USPQ2d 1895 (TTAB 2001); In re Management Recruiters International, Inc., 1 USPQ2d 1079 (TTAB 1986).

 

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 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); 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).

 

Specifically, the attached evidence from Internet sources shows that the proposed terms NATURAL IONIC ENERGY commonly describes the process by which applicant’s goods, “electric flat irons; hair brushes” operate and performed their desired function.  The attached Internet evidence shows the phrase, as a whole and in part, being used to describe the process by which hair is straightened using flat irons.  The process of creating IONIC ENERGY to straighten hair is a NATURAL one, and the term NATURAL thus has no additional source-signifying quality.  Also attached are copies of printouts from the USPTO X-Search database, which illustrate the descriptive use of the term IONIC with regard to the goods, as it is both common and regularly disclaimed.  Thus, applicant’s use of the term would both merely generically describe the function of the goods to consumers and lead to proprietary use of a common technological feature of the goods.

 

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

 

Under these circumstances, neither an amendment to proceed under Trademark Act Section 2(f), 15 U.S.C. §1052(f), nor an amendment to the Supplemental Register, can be recommended.

 

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. 

 

Response

 

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

 

 

 

 

/Peter Bromaghim/

Trademark Examining Attorney

Law Office 107

Phone: (571)-272-8912

Fax: (571)-273-8912

 

 

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 3 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 11 attachments  

1. 78034003P001OF001  

2. 75399761P001OF003  

3. 75399761P002OF003  

4. 75731600P001OF003  

5. 75731600P002OF003  

6. 75923761P001OF003  

7. 75923761P002OF003  

8. 76592306P001OF002  

9. 1-1  

10. 1-2  

11. 2-1  

 

Email 2 includes the following 8 attachments  

1. 2-2  

2. 3-1  

3. 3-2  

4. 3-3  

5. 4-1  

6. 4-2  

7. 4-3  

8. 5-1  

 

Email 3 includes the following 5 attachments  

1. 5-2  

2. 6-1  

3. 6-2  

4. 7-1  

5. 7-2  

 

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