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:

 

 

 

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).

 

DECEPTIVELY MISDESCRIPTIVE

 

Registration is refused because the applied-for mark is deceptively misdescriptive of applicant’s goods.  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.

 

The applicant applied to register the mark LADYSLIPPERS for “live plants, namely, Streptocarpus.”

 

The term LADY SLIPPER is “any of various cultivated orchids whose flowers somewhat resemble a slipper.”  Webster’s New World College Dictionary.  Copyright 2010 by Wiley Publishing, Inc.  (See attachments).

 

The applicant’s identified goods, however, are identified as “streptocarpus” which are “Any of various chiefly African plants of the genus Streptocarpus, widely cultivated as houseplants for their attractive foliage and clusters of showy colorful flowers.”  American Heritage Dictionary of the English Language.  Copyright by Houghton Mifflin.  (See attachments).

 

In this case, the applicant’s proposed mark misdescribes the identified goods.

 

Potential customers could reasonably believe that the applicant’s mark is being used to identify orchids because the flower on streptocarpus grows on the stem, like orchids, and some streptocarpus flowers have been described as being like orchids.  (See attachments).

 

For the foregoing reasons, the mark is refused registration under Section 2(e)(1) as deceptively misdescriptive of the goods.

 

--Supplemental Register Suggested

 

The applied-for mark has been refused registration on the Principal Register.  Applicant may respond to the refusal by submitting evidence and arguments in support of registration and/or by amending the application to seek registration on the Supplemental Register.  See 15 U.S.C. §1091; 37 C.F.R. §§2.47, 2.75(a); TMEP §§801.02(b), 816.  Amending to the Supplemental Register does not preclude applicant from submitting evidence and arguments against the refusal(s).  TMEP §816.04.

 

 

 

/John Dwyer/

Examining Attorney

Law Office 116

Telephone 571-272-9155

John.Dwyer1@uspto.gov

 

 

TO RESPOND TO THIS LETTER:  Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  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.  For questions about the Office action itself, please contact the assigned trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

 

All informal e-mail communications relevant to this application will be placed in the official application record.

 

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.