UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER 

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

 

ISSUE/MAILING DATE: 10/20/2010

 

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 for Conflicting 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).

 

Refusal  --  Mark is Deceptive

 

Registration is refused because the applied-for mark consists of or includes deceptive matter in relation to the identified goods.  Trademark Act Section 2(a), 15 U.S.C. §1052(a); see In re Budge Mfg. Co., 857 F.2d 773, 8 USPQ2d 1259 (Fed. Cir. 1988); In re Phillips-Van Heusen Corp., 63 USPQ2d 1047 (TTAB 2002); In re Organik Techs., Inc., 41 USPQ2d 1690 (TTAB 1997); TMEP §1203.02.

 

A mark is deceptive if the following criteria are met:

 

(1)  The applied-for mark consists of or contains a term that misdescribes the character, quality, function, composition, or use of the goods and/or services;

 

(2)  Prospective purchasers are likely to believe that the misdescription actually describes the goods and/or services; and

 

(3)  The misdescription is likely to affect a significant portion of the relevant consumers’ decision to purchase the goods and/or services.

 

See In re Budge, 857 F.2d at 775, 8 USPQ2d at 1260; In re ALP of S. Beach Inc., 79 USPQ2d 1009, 1010 (TTAB 2006); TMEP §1203.02(b); see also In re Spirits Int’l, N.V., 563 F.3d 1347, 1353, 1356, 90 USPQ2d 1489, 1492-93, 1495 (Fed. Cir. 2009) (holding that the test for materiality incorporates a requirement that a “significant portion of the relevant consumers be deceived”).

 

In this case, applicant’s mark includes the wording “NATURALS,” which indicates that the goods contain or are made from natural ingredients.  This feature or ingredient is important to a significant portion of the relevant consumers’ purchasing decision because dietary supplements made from natural ingredients would be better for the health of the animal consuming them.  See attached.

 

If the goods do not, in fact, contain or are made from natural ingredients, the applied-for mark will deceive the public as to a material factor in its purchasing decision.  See TMEP §1203.02(c).  If the goods do contain or are made from natural ingredients, applicant must amend the identification of goods to state this fact, and the refusal will be withdrawn.  See TMEP §1203.02(e)(ii), (f)(i).  Applicant may adopt the following identification of goods, if accurate: “dietary supplement for dogs and cats made from natural ingredients.”

 

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

 

Applicant must respond to the requirement(s) set forth below.

 

Requirement  --  Disclaimer

 

Applicant must disclaim the descriptive wording “NATURALS” apart from the mark as shown because it merely describes a feature or characteristic of the goods, i.e., that they are made from natural ingredients.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a). 

 

The computerized printing format for the Office’s Trademark Official Gazette requires a standardized format for a disclaimer.  TMEP §1213.08(a)(i).  The following is the standard format used by the Office:

 

No claim is made to the exclusive right to use “NATURALS” apart from the mark as shown.

 

TMEP §1213.08(a)(i); see In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).

 

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

 

 

 

 

 

 

/Michael P. Keating/

Trademark Attorney

Law Office 101

(571) 272-9177

Michael.Keating@uspto.gov (informal inquiries only)

 

 

TO RESPOND TO THIS LETTER:  Use the Trademark Electronic Application System (TEAS) response form at http://teasroa.gov.uspto.report/roa/.  Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/.  Please keep a copy of the complete TARR screen.  If TARR shows no change for more than six months, call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/teas/eTEASpageE.htm.

 

 

 

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION HAS ISSUED ON 10/20/2010 FOR

SERIAL NO. 85077111

 

Please follow the instructions below to continue the prosecution of your application:

 

 

TO READ OFFICE ACTION: Click on this link or go to http://portal.gov.uspto.report/external/portal/tow and enter the application serial number to access the Office action.

 

PLEASE NOTE: The Office action may not be immediately available but will be viewable within 24 hours of this e-mail notification.

 

RESPONSE IS REQUIRED: You should carefully review the Office action to determine (1) how to respond; and (2) the applicable response time period. Your response deadline will be calculated from 10/20/2010 (or sooner if specified in the office action).

 

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System Response Form.

 

HELP: For technical assistance in accessing the Office action, please e-mail

TDR@uspto.gov.  Please contact the assigned examining attorney with questions about the Office action. 

 

        WARNING

 

Failure to file the required response by the applicable deadline will result in the ABANDONMENT of your application.