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:

 

INTERNATIONAL REGISTRATION NO. 1007453

 

This is a PROVISIONAL FULL REFUSAL of the trademark and/or service mark in the above-referenced U.S. application.  See 15 U.S.C. §1141h(c).

 

WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL FULL REFUSAL:

 

Applicant may respond directly to this provisional refusal Office action, or applicant’s attorney may respond on applicant’s behalf.  However, the only attorneys who can practice before the USPTO in trademark matters are as follows:

 

(1)  Attorneys in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other federal territories and possessions of the United States; and

 

(2)  Canadian agents/attorneys who represent applicants residing in Canada and who have received reciprocal recognition by the USPTO under 37 C.F.R. §11.14(c).

 

37 C.F.R. §§11.1, 11.14; TMEP §602.

 

Foreign attorneys are not permitted to practice before the USPTO, other than properly authorized Canadian attorneys.  TMEP §602.06(b).  Filing written communications, authorizing an amendment to an application, or submitting legal arguments in response to a requirement or refusal constitutes representation of a party in a trademark matter.  A response signed by an unauthorized foreign attorney is considered an incomplete response.  See TMEP §§602.03, 712.03.

 

THE APPLICATION HAS BEEN PROVISIONALLY REFUSED AS FOLLOWS:

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SEARCH OF OFFICE’S DATABASE OF MARKS

 

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

SECTION 2(e)(1) REFUSAL – MERELY DESCRIPTIVE – GENERIC ADVISORY

           

Registration is refused because the applied-for mark merely describes a feature and characteristic of applicant’s services.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

 

In addition to being merely descriptive, the applied-for mark appears to be generic in connection with the identified services and, therefore, incapable of functioning as a source-identifier for applicant’s services.  In re The Am. Acad. of Facial Plastic & Reconstructive Surgery, 64 USPQ2d 1748 (TTAB 2002); In re A La Vieille Russie, Inc., 60 USPQ2d 1895 (TTAB 2001); see TMEP §§1209.01(c) et seq., 1209.02.  Under these circumstances, neither an amendment to proceed under Trademark Act Section 2(f) nor an amendment to the Supplemental Register can be recommended.  See TMEP §1209.01(c).

 

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 has applied to register ONLINE in International Class 035 for “Presentation of goods, namely dried fruits, jams, chocolate coating, coffee-based products, cocoa, cocoa based products, pastry, marzipan, chocolate and chocolate pieces for mixing in, chocolate based products, sugar based products, alcoholic beverages, especially schnapps and liqueurs with chocolate flavour, in miniature cable cars in order to enable consumers to see, taste and purchase the goods; advertising; distribution of samples for advertising purposes; distribution of advertising materials” and International Class 041 for “Entertainment; cultural activities; organization of exhibitions for cultural or educational purposes, especially the performance of exhibitions and presentations of production and manufacturing processes for entertainment and educational purposes; demonstration of manufacturing processes for entertainment and educational purposes; presentation of production and manufacturing processes for entertainment and educational purposes.”

 

The term ONLINE refers to something that is “accessible via a computer or computer network.”  Please see the attached dictionary definitions.  As such, this wording merely describes that applicant’s various applied-for services in International Classes 035 and 041 are accessible via a computer or computer network.  In other words, applicant’s services are provided or are available online.

 

Also attached are fourteen (14) third-party registrations with the term ONLINE disclaimed.  Third-party registrations featuring the same or similar goods and/or services as applicant’s goods and/or services are probative evidence on the issue of descriptiveness where the relevant word or term is disclaimed, registered under Trademark Act Section 2(f) based on a showing of acquired distinctiveness, or registered on the Supplemental Register.  See Sweats Fashions, Inc. v. Pannill Knitting Co., 833 F.2d 1560, 1564-65, 4 USPQ2d 1793, 1797 (Fed. Cir. 1987); In re Box Solutions Corp., 79 USPQ2d 1953, 1955 (TTAB 2006); In re Finisar Corp., 78 USPQ2d 1618, 1621 (TTAB 2006).

 

For the above reasons, since the proposed mark is merely descriptive of the services, registration is refused under Trademark Act Section 2(e)(1).  Additionally, the applied-for mark appears to be generic in connection with the identified services and, therefore, incapable of functioning as a source-identifier for applicant’s goods.  In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987); In re Pennzoil Prods. Co., 20 USPQ2d 1753 (TTAB 1991); see TMEP §§1209.01(c) et seq., 1209.02.  Under these circumstances, an amendment to proceed under Trademark Act Section 2(f) cannot be recommended.  See TMEP §1209.01(c).

 

SECTION 2(e)(1) REFUSAL – DECEPTIVELY MISDESCRIPTIVE

 

If the services are not provided “online”, then applicant is advised of the following alternative refusal.

 

Registration is refused because the applied-for mark is deceptively misdescriptive of applicant’s services.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §1209.04.

 

A mark is deceptively misdescriptive if it describes an ingredient, quality, characteristic, function or feature of the relevant goods and/or services, and the description conveyed by the mark is both false and plausible.  In re Woodward & Lothrop Inc., 4 USPQ2d 1412 (TTAB 1987) (holding CAMEO deceptively misdescriptive of jewelry); In re Ox-Yoke Originals, Inc., 222 USPQ 352 (TTAB 1983) (holding G.I. deceptively misdescriptive of gun cleaning patches, rods, brushes, solvents and oils); TMEP §1209.04.

 

The test for deceptive misdescriptiveness has two parts:  (1) whether the mark misdescribes an ingredient, characteristic, quality, function, feature, composition or use of the goods and/or services; and if so, (2) would consumers be likely to believe the misrepresentation.  See In re Berman Bros. Harlem Furniture Inc., 26 USPQ2d 1514 (TTAB 1993); In re Woodward & Lothrop Inc., 4 USPQ2d 1412 (TTAB 1987); In re Quady Winery, Inc., 221 USPQ 1213 (TTAB 1984); TMEP §1209.04.

 

If applicant’s services are not provided online or are not available online, then the proposed mark misdescribes a feature or characteristic of the services.  Consumers are likely to believe that the services are provided online since many companies presently offer services and goods online.  Thus, the mark ONLINE misdescribes a feature and characteristic of the services and consumers are likely to believe the misrepresentation.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusals by submitting evidence and arguments in support of registration.

 

Applicant must respond to the requirements set forth below.

 

REQUEST FOR INFORMATION

 

To permit proper examination of the application, applicant must submit additional information about the services.  See 37 C.F.R. §2.61(b); In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004); TMEP §814.  The requested information should include fact sheets, brochures, and/or advertisements.  If these materials are unavailable, applicant should submit similar documentation for services of the same type, explaining how its own services will differ.  If the services feature new technology and no information regarding competing services is available, applicant must provide a detailed factual description of the services.

 

The submitted factual information must make clear what the services are and how they are rendered, their salient features, and their prospective customers and channels of trade.  Conclusory statements regarding the services will not satisfy this requirement for information.

 

Failure to respond to a request for information is an additional ground for refusing registration.  See In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701-02 (TTAB 2003).  Merely stating that information about the services is available on applicant’s website is an inappropriate response to a request for additional information and is insufficient to make the relevant information of record.  See In re Planalytics, 70 USPQ2d at 1457-58.

 

ENTITY CLARIFICATION

 

The application does not include applicant’s “Legal Nature:  Place Incorporated.”  In addition, the application indicated that applicant is a “private limited company” however, the entity designation GmbH typically refers to a “limited liability company.”  Thus, applicant must clarify its entity type (“Legal Nature”) and indicate its citizenship (“Place Incorporated”).  37 C.F.R. §2.32(a)(3); TMEP §§803.03, 803.04.

 

Acceptable entity types include an individual, a partnership, a corporation, or a joint venture.  See 37 C.F.R. §2.32(a)(3); TMEP §§803.03 et seq.

 

If applicant’s entity type is an individual, applicant must indicate his or her national citizenship for the record.  37 C.F.R. §2.32(a)(3)(i); TMEP §803.04.  If applicant’s entity type is a corporation or association, applicant must set forth the country under whose laws applicant is organized or incorporated.  37 C.F.R. §2.32(a)(3)(ii); TMEP §§803.03(c), 803.04.  If applicant’s entity type is a partnership or joint venture, applicant must specify the country under whose laws the partnership or joint venture is organized.  37 C.F.R. §2.32(a)(3)(ii); TMEP §§803.03(b), 803.04

 

RECITATION OF SERVICES

 

The wording “PRESENTATION OF GOODS….IN MINIATURE CABLE CARS” in the identification of services is indefinite and must be clarified because the exact nature of the service is unclear.  See TMEP §1402.01.  Applicant must amend this wording to specify the common commercial or generic name for the services.  If there is no common commercial or generic name for the services, then applicant must describe the nature of the services as well as their main purpose, channels of trade, and the intended consumer(s). 

 

The wording “ENTERTAINMENT; CULTURAL ACTIVITIES” in the identification of services is indefinite and must be clarified because the specific type(s) of service(s) must be indicated.  See TMEP §1402.01.

 

Applicant must also specify the subject matter of applicant’s production and manufacturing process presentations and demonstrations.

 

PLEASE NOTE: The international classification of goods and/or services in applications filed under Trademark Act Section 66(a) cannot be changed from the classification given to the goods and/or services by the International Bureau in the corresponding international registration.  TMEP §§1401.03(d), 1904.02(b).  Therefore, any modification to this wording must identify services in International Classes 035 and 041 only, the classification specified in the application for these services.

 

Applicant may adopt the following amended recitation of services suggested by the trademark examining attorney, if they accurately reflect the nature, function, purpose, and scope of applicant’s services.  The suggested identification also serves as examples of acceptable language and may be used as a guide in drafting amended language.  Please note required changes in bold type and applicant should pay particular attention to language removed by the trademark examining attorney: 

 

International Class 035: Presentation of goods FOR ENABLING consumers to see, taste and purchase the goods, NAMELY, RETAIL STORE SERVICES IN THE FORM OF miniature cable cars FEATURING dried fruits, jams, chocolate coating, coffee-based FOODS, cocoa, cocoa based FOODS, pastry, marzipan, chocolate and chocolate pieces for mixing INTO OTHER FOODS, chocolate based FOODS, sugar based FOODS, AND alcoholic beverages, especially schnapps and liqueurs with chocolate flavour; advertising; distribution of samples for advertising purposes; distribution of advertising materials;

 

International Class 041: Entertainment SERVICES, NAMELY, ___________ {indicate specific entertainment service, e.g., conducting parties, wine and food tastings etc.}; ORGANIZING COMMUNITY cultural EVENTS; organization of exhibitions for cultural or educational purposes, especially the performance of exhibitions and presentations of production and manufacturing processes IN THE FIELD OF _________ {indicate specific field and/or subject matter, e.g., chocolate making}for entertainment and educational purposes; demonstration of manufacturing processes IN THE FIELD OF _________ {indicate specific field and/or subject matter, e.g., chocolate making} for entertainment and educational purposes; EDUCATIONAL presentation of production and manufacturing processes IN THE FIELD OF _________ {indicate specific field and/or subject matter} for entertainment and educational purposes.

 

Identifications can be amended only to clarify or limit the goods and/or services; adding to or broadening the scope of the goods and/or services is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07(a), 1904.02(b).  In addition, for applications filed under Trademark Act Section 66(a), amendments to the identification are limited to goods and/or services in the international class(es) designated in the application as filed.  37 C.F.R. §2.85(d); see TMEP §§1402.03(d), 1402.07(a). 

 

Thus, applicant can only amend the identification to include goods and/or services that are (1) within the scope of the identification in the application as filed, and (2) classified in an international class designated in the application as filed.

 

For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.  See TMEP §1402.04.

 

SUPPLEMENTAL REGISTER UNAVAILABLE

 

Applicant cannot overcome the refusal by amending the application to the Supplemental Register, because a mark in an application under §66(a) of the Trademark Act is not eligible for registration on the Supplemental Register.  Trademark Act Section 68(a)(4), 15 U.S.C. §1141h(a)(4); 37 C.F.R. §§2.47(c) and 2.75(c); TMEP §§801.02(b), 815, 816.01 and 1904.02(c).

 

RESPONSE GUIDELINES

 

There is no required format or form for responding to an Office action.  The Office recommends applicants use the Trademark Electronic Application System (TEAS) to respond to Office actions online at http://www.gov.uspto.report/teas/index.html.  If applicant responds on paper via regular mail, the response should include the title “Response to Office Action” and the following information:  (1) the name and law office number of the examining attorney, (2) the serial number and filing date of the application, (3) the date of issuance of this Office action, (4) applicant’s name, address, telephone number and e-mail address (if applicable), and (5) the mark.  37 C.F.R. §2.194(b)(1); TMEP §302.03(a).

 

In the response, applicant should explicitly address each refusal and/or requirement raised in the Office action.  If a refusal has issued, applicant may wish to argue against the refusal, i.e., submit arguments and/or evidence as to why the refusal should be withdrawn and why the mark should register.  To respond to requirements, applicant should set forth in writing the required changes or statements. 

 

The response must be signed by applicant or someone with legal authority to bind applicant (i.e., a corporate officer of a corporate applicant, the equivalent of an officer for unincorporated organizations or limited liability company applicants, a general partner of a partnership applicant, each applicant for applications with multiple individual applicants).  TMEP §§605.02, 712.  The signer must personally sign and date the response or manually enter their electronic signature in the signature block.  TMEP §605.02

 

Applicant may wish to hire a trademark attorney to assist in prosecuting this application because of the legal technicalities involved.  The Office, however, cannot aid in the selection of an attorney.  37 C.F.R. §2.11.

 

Please be advised that the only attorneys who can practice before the USPTO in trademark matters are as follows:

 

(1)  Attorneys in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other federal territories and possessions of the United States; and

 

(2)  Canadian agents/attorneys whorepresent applicants residing in Canada and who have received reciprocal recognition by the USPTO under 37 C.F.R. §11.14(c).

 

37 C.F.R. §§11.1, 11.14; TMEP §602.

 

Foreign attorneys are not permitted to practice before the USPTO, other than properly authorized Canadian attorneys.  TMEP §602.06(b); see 37 C.F.R. §11.14(c).  Filing written communications, authorizing an amendment to an application, or submitting legal arguments in response to a requirement or refusal constitutes representation of a party in a trademark matter.  A response signed by an unauthorized foreign attorney is considered an incomplete response.  See 37 C.F.R. §2.65(a)-(b); TMEP §§602.03, 712.03.

 

If applicant has questions about its application or this Office action, please contact the assigned trademark examining attorney at the telephone number below.

 

 

/Hai-Ly H. Lam/

Trademark Attorney

Law Office 112

Office: 571-272-3354

Fax: 571-273-9112

 

 

 

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.