| To: | Oatly AB (karen.gaunt@dinsmore.com) |
| Subject: | U.S. Trademark Application Serial No. 79265606 - BARISTA - 109083-1 |
| Sent: | February 24, 2021 03:56:27 PM |
| Sent As: | ecom108@uspto.gov |
| Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 79265606
Mark: BARISTA
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Correspondence Address:
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Applicant: Oatly AB
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Reference/Docket No. 109083-1
Correspondence Email Address: |
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FINAL OFFICE ACTION
The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS) and/or Electronic System for Trademark Trials and Appeals (ESTTA). A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action.
Issue date: February 24, 2021
International Registration No. 1483403
This Office action is in response to applicant’s communication filed on February 3, 2021. The examining attorney has carefully considered applicant’s arguments and evidence and found them unpersuasive. Accordingly, for the reasons set forth below, the refusal under Trademark Act Section 2(d) is now made FINAL with respect to U.S. Registration No. 4750606. See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b). Additionally, the refusal under Trademark Act Section 2(e)(1) is now made FINAL for the reasons set forth below. See 15 U.S.C. §1052(e)(1); 37 C.F.R. §2.63(b).
FINAL Refusal – Section 2(d) Likelihood of Confusion
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 4750606. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. Information regarding this registration was sent previously and is incorporated herein by reference. This refusal is now made FINAL.
Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties. See 15 U.S.C. §1052(d). Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). Any evidence of record related to those factors need be considered; however, “not all of the DuPont factors are relevant or of similar weight in every case.” In re Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)).
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.
Comparing the Marks
In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression. In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017); Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b)-(b)(v).
In the present case, applicant’s mark is “BARISTA” in standard characters, and registrant’s mark is “BARISTA” in standard characters. These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods and/or services. Id.
Thus, when comparing the marks as a whole, the overall impression is that of highly similar marks.
Comparing the Goods
The compared goods and/or services need not be identical or even competitive to find a likelihood of confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i). They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).
Here, applicant’s goods are listed as:
International Class 029: Dairy substitutes, namely, artificial cream, hazelnut milk, soy milk, oat-based cream, almond milk, almond milk-based beverages, coconut milk, coconut milk-based beverages, hemp milk used as milk substitute, peanut milk, peanut milk-based beverages, rice milk, rice milk for use as milk substitute, functional milk substitute beverages, fruit-flavored milk substitutes based on oats, oat-based yoghurt substitute, oat-based yoghurt and drinking yoghurt free of milk and lactose, fruit-flavored yoghurt substitutes containing oats, cream substitutes, cream substitutes containing oat; milk substitutes; oat-based drinks for use as milk substitute; milk substitutes containing oats.
Registrant’s goods are listed as:
International Class 029: organic dairy products, namely, milk and half and half.
The trademark examining attorney previously has attached evidence from the USPTO’s X-Search database consisting of a number of third-party marks registered for use in connection with the same or similar goods as those of both applicant and registrant in this case. This evidence shows that the goods listed therein, namely dairy products and dairy substitute products, are of a kind that may emanate from a single source under a single mark. See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); TMEP §1207.01(d)(iii).
Additionally, all the goods are used for the same purpose. Dairy substitute half-and-half is often used as a creamer for coffee. Dairy half-and-half is used for the same purpose. That the applicant’s goods are listed as “substitutes” indicates that the goods are to be used interchangeably. Thus, they will be encountered by the same consumers looking to address the same need.
Thus, a comparison of the goods shows that the goods are highly related.
Applicant’s Arguments
Applicant argues against this refusal by stating that the registrant’s mark is weak and entitled to a very limited scope of protection. Applicant points to the large number of “BARISTA”-formative marks for coffee-related products including milk/cream products and their substitutes. The Court of Appeals for the Federal Circuit and the Trademark Trial and Appeal Board have recognized that marks deemed “weak” or merely descriptive are still entitled to protection under Section 2(d) against the registration by a subsequent user of a similar mark for closely related goods and/or services. TMEP §1207.01(b)(ix); see King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 1401, 182 USPQ 108, 109 (C.C.P.A. 1974); In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1246 (TTAB 2010).
Here, applicant’s and registrant’s marks are identical. Where the marks of the respective parties are identical or virtually identical, as in this case, the degree of similarity or relatedness between the goods needed to support a finding of likelihood of confusion declines. See In re Country Oven, Inc., 2019 USPQ2d 443903, at *5 (TTAB 2019) (citing In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017)); TMEP §1207.01(a); see also In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993).
Here, the parties’ goods are not only related, but applicant’s goods are intended to be, and described as, a substitute for registrant’s goods. The goods are meant to be used interchangeably. Where the goods and/or services of an applicant and registrant are “similar in kind and/or closely related,” the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as in the case of diverse goods and/or services. In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b).
It is difficult to imagine a scenario where the marks and the goods of the parties could be more aligned than the present situation. If the applicant’s mark is allowed to register, then the weak protection afforded the registrant’s mark fades to no protection at all.
Additionally, consumers would be left with an even more confusing marketplace, unable to ascertain the source of goods, and likely to be confused not only regarding the source of goods, but likely to mistakenly purchase goods that could be potentially unhealthful for particular consumers. Attached evidence from Harvard Medical School and the Mayo Clinic shows that consumption of dairy-based products often leads to significant bowel discomfort, pain, and diarrhea for up to 90 percent of those from areas of eastern Asia, up to 80 percent of American Indians, 65 percent of African-Americans, and 50 percent of Hispanics.
Where the goods of the parties are sold under the identical mark, and the goods are interchangeable, but purchase of one parties’ goods could lead to significant symptoms for a large segment of the population, the prevention of confusion takes on increased importance. The Trademark Trial and Appeal Board and its primary reviewing court have used a stricter standard to determine likelihood of confusion for pharmaceuticals or medicinal products due to the potential harm or serious consequences that could be caused if the public confused one drug or medicinal product for another. See Glenwood Labs., Inc. v. Am. Home Prods. Corp., 455 F.2d 1384, 1386-87, 173 USPQ 19, 21-22 (C.C.P.A. 1972); Schering Corp. v. Alza Corp., 207 USPQ 504, 509 (TTAB 1980); Ethicon, Inc. v. Am. Cyanamid Co., 192 USPQ 647, 651-52 (TTAB 1976); TMEP §1207.01(d)(xii).
Here, the goods are not medicinal or pharmaceutical products, but the reasons to prevent confusion involve potential, foreseeable, and probable medical side effects. Thus, in this case where confusion could result in harm or other serious consequences to consumers, this potential harm is considered an additional relevant factor and a lesser degree of proof may be sufficient to establish a likelihood of confusion. See Glenwood Labs., Inc., 455 F.2d at 1386-87, 173 USPQ at 21-22; Schering Corp., 207 USPQ at 509; Ethicon, Inc., 192 USPQ at 651-52; TMEP §1207.01(d)(xii).
Conclusion
Applicant’s arguments and evidence against the refusal have been carefully considered and deemed unpersuasive. The overriding concern is not only to prevent buyer confusion as to the source of the goods, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).
In sum, for the reasons outlined above, applicant’s mark is refused registration based on a likelihood of confusion with the cited mark. This refusal is now made FINAL.
FINAL Refusal – Merely Descriptive
Registration is refused because the applied-for mark merely describes features or the purpose of applicant’s goods. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq. This refusal is now made FINAL.
A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods and/or services. TMEP §1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)).
The determination of whether a mark is merely descriptive is made in relation to an applicant’s goods and/or services, not in the abstract. DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012); In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); TMEP §1209.01(b); see, e.g., In re Polo Int’l Inc., 51 USPQ2d 1061, 1062-63 (TTAB 1999) (finding DOC in DOC-CONTROL would refer to the “documents” managed by applicant’s software rather than the term “doctor” shown in a dictionary definition); In re Digital Research Inc., 4 USPQ2d 1242, 1243-44 (TTAB 1987) (finding CONCURRENT PC-DOS and CONCURRENT DOS merely descriptive of “computer programs recorded on disk” where the relevant trade used the denomination “concurrent” as a descriptor of a particular type of operating system).
“Whether consumers could guess what the product [or service] is from consideration of the mark alone is not the test.” In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
“A mark may be merely descriptive even if it does not describe the ‘full scope and extent’ of the applicant’s goods or services.” In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004) (citing In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1346, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001)); TMEP §1209.01(b). It is enough if a mark describes only one significant function, attribute, or property. In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); TMEP §1209.01(b); see In re Oppedahl & Larson LLP, 373 F.3d at 1173, 71 USPQ2d at 1371.
Here, applicant’s mark is “BARISTA” in standard characters. Applicant’s goods are listed as:
Dairy substitutes, namely, artificial cream, hazelnut milk, soy milk, oat-based cream, almond milk, almond milk-based beverages, coconut milk, coconut milk-based beverages, hemp milk used as milk substitute, peanut milk, peanut milk-based beverages, rice milk, rice milk for use as milk substitute, functional milk substitute beverages, fruit-flavored milk substitutes based on oats, oat-based yoghurt substitute, oat-based yoghurt and drinking yoghurt free of milk and lactose, fruit-flavored yoghurt substitutes containing oats, cream substitutes, cream substitutes containing oat, non-dairy creamer; milk substitutes; oat based drinks for use as milk substitute; milk substitutes containing oats.
The previously attached definitional evidence shows that “BARISTA” means a person who makes coffee in a café, and that part of the job involves steaming or frothing the milk products (or milk substitutes) used in such drinks. Thus, “BARISTA” in the mark conveys the meaning of being intended for those who make coffee and steam milk (or milk substitutes) at a café. Wording that describes an intended user or group of users of a product or service is merely descriptive. E.g., In re Planalytics, Inc., 70 USPQ2d 1453 (TTAB 2004) (holding GASBUYER merely descriptive of intended user of risk management services in the field of pricing and purchasing natural gas); In re Camel Mfg. Co., 222 USPQ 1031 (TTAB 1984) (holding MOUNTAIN CAMPER merely descriptive of intended users of retail and mail order services in the field of outdoor equipment and apparel); see TMEP §1209.03(i).
Evidence attached previously shows that it is common for applicant’s competitors and makers of similar goods to indicate that the goods are barista blends, the barista collection, the barista series, or the barista formula in addition to indicating that they are the barista edition. Further evidence, including evidence from applicant’s own advertising, shows that alternative milks sold under the “BARISTA” moniker are specially formulated to provide better froth and steam for use with hot drinks such as coffee. The evidence shows that this wording is widely understood to indicate particular properties in the goods that render them useful for blending with hot drinks. The evidence shows that applicant’s “BARISTA” line is the only line of applicant’s goods that are sold directly to coffee shops and cafés – thus, the evidence shows that these goods have their own sales and marketing channels specifically for a particular targeted group of consumers, namely, baristas.
Based on the evidence, it is clear that the wording “BARISTA” in the mark conveys both that the goods are intended for use by baristas and that the goods are specially formulated for coffee or other hot drinks for producing optimal froth and foam. The evidence shows that this word has become, in the relevant industry, an indicator or term of art that signifies specially formulated goods suitable for use with hot drinks. Accordingly, the mark “BARISTA” is descriptive in that it is informational in that it conveys specific formulation for particular usage, and “BARISTA” is descriptive in that it names a particular trade channel or targeted consumer.
Applicant’s Arguments
Applicant has argued against the refusal by stating that: (1) the wording does not “immediately convey” descriptive meaning in relation to the goods; (2) competitors do not need to use the term “BARISTA” to describe their goods; (3) third parties have not been required to disclaim similar wording; and (4) any doubt regarding descriptiveness should resolve in applicant’s favor.
Immediate Conveyance of Meaning
Applicant argues that the descriptive meaning of “BARISTA” is not immediately conveyed. However, it is well settled that terms that describe the function or purpose of a product or service may be merely descriptive. TMEP §1209.03(p); see, e.g., In re Hunter Fan Co., 78 USPQ2d 1474, 1477 (TTAB 2006) (holding ERGONOMIC merely descriptive of ceiling fans); In re Wallyball, Inc., 222 USPQ 87, 89 (TTAB 1984) (holding WALLYBALL merely descriptive of sports clothing and game equipment); In re Orleans Wines, Ltd., 196 USPQ 516, 517 (TTAB 1977) (holding BREADSPRED merely descriptive of jams and jellies). Copious previously attached evidence shows that, in common parlance, “BARISTA” is commonly used to indicate a line of milk-substitutes that are intended for use by coffee professionals and for use in hot drinks. The common usage of this, and highly similar, wording shows that consumers would indeed immediately understand the wording to have particular meaning in relation to the applicant’s goods.
Specifically, the evidence shows the following competitors using similar language:
Additional evidence shows similar language used with other goods commonly used to make coffee or tea drinks:
Evidence in the January 15, 2020 Office action includes articles about the growth of dairy-free milks designed specifically for use in coffee-type beverages. For instance, in “Barista Edition: A guide to Dairy Free Milks” on the www.baristainstitute.com website, indicates that
[I]t is a good idea to favour products intended for professional use that are designed to cope better with the strains of coffee preparation. Good examples of these are Alpro’s Soya for Professionals and Oatly’s oad drink Barista Edition…
“Oatley’s oat drink is developed by top baristas. It tastes silky and smooth, froths up better than ordinary milk products and also keeps long,” says Bill Stjernberg, Oaty’s country manager in Finland.
An article titled “Testing Nine Barista Style Vegan Milks with a Pro Do the Oat Milks Deserve the Hype? And What does “Barista Style” Mean Anyway?” on www.medium.com reads:
Still, perhaps you’ve noticed that your non-dairy lattes, cortados, and flat whites are getting creamier and richer. That’s thanks to “barista style” non-dairy milk, which are specially formulated to produce sturdier microfoam, the super-smooth milky foam that tops espresso-based drinks.
An article on www.foodsguy.com titled “The Absolute Best Soy Milk for Lattes” states that “you want to look for one of two terms on the label: professional or barista. This will tell you that the formula has been adapted to stand up to the heat of a steamer or foamer.”
An article on www.wellandgood.com titled “Breaking Alt-Milk News: Oatly Says There’s an Oat-milk Shortage but Plans to Restock ASAP” discusses how the applicant’s Barista Edition “is extra-popular because it gets nice and foamy thanks to its slightly higher fat content than the brand’s other offering (meaning no coffee curdling!).”
Applicant’s own website clearly shows the intended use for the goods, as the website reads:
So you are a barista? Perfect. This carton of Barista Edition oat drink is made from liquid oats, which means it isn’t overly sweet or excessively heavy. What it is is fully foamable, putting you in total control over the density and performance of your foam so you can showcase your latte art… So you are a non-barista? Also perfect. Just heat this Barista Edition Oat Drink in a container while giving it a whirl until it foams up nicely and then pour yourself a latte without milk.
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This is our super premium product that… performs technically beautifully when foamed. Of if you are the kind of person who likes to add a splash of milk to your deep dark brew, this product can handle that as well without wimping out and separating.
…
In order to make this product perform to the professional expectations of baristas, we have used an acidity regulator.
Thus, the applicant’s website shows that applicant’s goods are intended for use primarily by coffee professionals or those interested in creating drinks that match those made by professionals.
Applicant argues that because applicant also included information for those who are not baristas on their website, that the wording is not descriptive of the target consumer. Specifically, applicant’s website also reads:
So you’re not a barista? Also perfect. Just heat this Barista Edition Oatmilk in a container while giving it a whirl until it foams up nicely and then pour yourself a latte without cow’s milk.
And it also reads:
We made this product for people who like the idea of waking up to find the same amazing oatmilk their local barista loves…
Applicant’s usage indicates that they are marketing to those who specifically want to use the goods for hot drinks wherein the product whips up or foams better than goods that are not specially formulated for hot drinks. The applicant’s advertising indicates that they are aware their consumers are looking for products that are particularly formulated, and this particular line of products meets that niche.
Based on the wide-spread usage of the word “BARISTA” in the marketplace for similar goods, it is clear that consumers will not only recognize the meaning of this wording, but will be looking for it. Just because some consumers are not professional baristas does not mean that a significant target consumer or market niche is not named by the mark. Nor does it mean that consumers will not recognize the descriptiveness in relation to the particular formulation. As such, applicant’s arguments against the refusal are not persuasive.
Usage by Competitors
Applicant’s argument that competitors do not need to use this wording is belied by the evidence, discussed above, showing widespread usage of similar wording by competitors. Even if others were not using wording that is descriptive, this fact alone would not render the wording non-descriptive. The fact that an applicant may be the first or only user of a merely descriptive designation does not necessarily render a word or term incongruous or distinctive. See In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1514 (TTAB 2016); In re Phoseon Tech., Inc., 103 USPQ2d 1822, 1826 (TTAB 2012); TMEP §1209.03(c).
Two major reasons for not protecting descriptive marks are (1) to prevent the owner of a descriptive mark from inhibiting competition in the marketplace and (2) to avoid the possibility of costly infringement suits brought by the trademark or service mark owner. In re Abcor Dev. Corp., 588 F.2d 811, 813, 200 USPQ 215, 217 (C.C.P.A. 1978); TMEP §1209. Businesses and competitors should be free to use descriptive language when describing their own goods and/or services to the public in advertising and marketing materials. See In re Styleclick.com Inc., 58 USPQ2d 1523, 1527 (TTAB 2001).
Thus, even if competitors were not currently using wording that is descriptive, the marketplace should be free to enable competitors to use descriptive wording in the future. Thus, this argument is not persuasive.
Third-Party Usage
Applicant’s argument that others have used similar wording without disclaimer requirements is also similarly unpersuasive. The fact that third-party registrations exist for marks allegedly similar to applicant’s mark is not conclusive on the issue of descriptiveness. See In re Scholastic Testing Serv., Inc., 196 USPQ 517, 519 (TTAB 1977); TMEP §1209.03(a). An applied-for mark that is merely descriptive does not become registrable simply because other seemingly similar marks appear on the register. In re Scholastic Testing Serv., Inc., 196 USPQ at 519; TMEP §1209.03(a).
It is well settled that each case must be decided on its own facts and the Trademark Trial and Appeal Board is not bound by prior decisions involving different records. See In re Nett Designs, Inc., 236 F.3d 1339, 1342, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001); In re Datapipe, Inc., 111 USPQ2d 1330, 1336 (TTAB 2014); TMEP §1209.03(a). The question of whether a mark is merely descriptive is determined based on the evidence of record at the time each registration is sought. In re Virtual Indep. Paralegals, LLC, 2019 USPQ2d 111512, at *9 (TTAB 2019) (citing In re Nett Designs, Inc., 236 F.3d at 1342, 57 USPQ2d at 1566); TMEP §1209.03(a).
Thus, third-party registrations of applicant’s mark or portions of applicant’s mark are not probative on the question of descriptiveness. Each case must be taken on its own facts. In re Pennzoil Prods. Co., 20 USPQ2d 1753, 1758 (TTAB 1991); TMEP §1209.03(a).
Moreover, the facts regarding these third-party registrations are easily distinguishable from the applicant’s situation. For instance, with regard to applicant’s cited “BARISTA”-formative marks:
Accordingly, applicant’s argument that third-party registrations show the mark is not descriptive in relation to applicant’s goods is not persuasive.
Doubt
Finally, applicant argues that any doubt regarding the mark’s descriptiveness should be resolved on applicant’s behalf. E.g., In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 1571 4 USPQ2d 1141, 1144 (Fed. Cir. 1987); In re Grand Forest Holdings, Inc., 78 USPQ2d 1152, 1156 (TTAB 2006). However, in the present case, the evidence of record leaves no doubt that the mark is merely descriptive.
In sum, applicant’s arguments against the disclaimer requirement are not supported by the evidence, which overwhelmingly supports the disclaimer requirement. As such, this refusal is now made FINAL.
Response Guidelines
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
How to respond. Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).
/Andrea R. Hack/
Andrea Hack
Examining Attorney
Law Office 108
571-272-5413
andrea.hack@uspto.gov
RESPONSE GUIDANCE
