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: 2/8/2012

 

 

 

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).

 

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.

 

SUMMARY OF ISSUES THAT APPLICANT MUST ADDRESS:

 

• Refusal under Trademark Act Section 2(e)(1) – Mark is Merely Descriptive
• Requirement for a Disclaimer

 

SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE

 

Registration is refused because the applied-for mark THE YOGURT CULTURE COMPANY merely describes a feature of applicant’s goods and services and identifies the goods and services as being offered by a company.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

 

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).  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).

 

In this case, applicant intends to use the mark THE YOGURT CULTURE COMPANY on or in connection with frozen yogurt and retail store services and restaurants and cafes featuring yogurt.  As the attachments indicate, YOGURT is defined as “a food made from milk that has become thick and slightly sour, sometimes with fruit added to it”; CULTURE means “a group of bacteria or other cells that have been grown in a scientific experiment”; and COMPANY means “an organization that provides services, or that makes or sells goods for money”.  See definition from Macmillan Dictionary attached.  As such, the mark is merely descriptive of the applicant’s goods/services, namely, a company that offers yogurt-culture-related goods and services. 

 

To the extent applicant’s yogurt is made from yogurt culture, the wording YOGURT CULTURE identifies an ingredient of applicant’s goods.  A term that describes an ingredient of the goods is merely descriptive.  TMEP §1209.01(b); see In re Keebler Co., 479 F.2d 1405, 178 USPQ 155 (C.C.P.A. 1973) (holding RICH ‘N CHIPS merely descriptive of chocolate chip cookies); In re Entenmann’s, Inc., 15 USPQ2d 1750 (TTAB 1990) (holding OATNUT merely descriptive of bread containing oats and hazelnuts), aff’d per curiam, 928 F.2d 411 (Fed. Cir. 1991).

 

A mark that consists of the generic name of a food that is the specialty of the house or a principal attraction of the restaurant has been held merely descriptive of restaurant services.  See In re Fr. Croissant, Ltd., 1 USPQ2d 1238 (TTAB 1986) (holding LE CROISSANT SHOP merely descriptive of restaurant services providing croissants); In re Le Sorbet, Inc., 228 USPQ 27 (TTAB 1985) (holding LE SORBET descriptive of restaurant and carryout shops which serve fruit ices); TMEP §1209.03(r).  To the extent applicant’s restaurants and cafes serve food made from yogurt culture, the wording is descriptive.

 

Business entity designations such as “Company” must be disclaimed (see below) because they merely indicate applicant’s entity type and generally do not function to indicate the source of goods or services.  TMEP §1213.03(d); see, e.g., Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U.S. 598, 602-03 (1888); In re Patent & Trademark Servs., Inc., 49 USPQ2d 1537, 1539-40 (TTAB 1998); In re The Paint Prods. Co., 8 USPQ2d 1863, 1866 (TTAB 1988).  Here, the wording COMPANY does not make the rest of the mark any less descriptive.

 

For applicant’s convenience, the examining attorney has attached the dictionary definition of the wording, internet evidence of the wording used in the industry, and evidence of past Office practice regarding disclaimers of the wording or registration on the Supplemental Register or the Principal Register 2(f) with respect to related goods/services.  

 

For example, please note the following:

 

• Internet evidence from Wikipedia explaining, “Yogurt or yoghurt (other spellings listed below) is a dairy product produced by bacterial fermentation of milk. The bacteria used to make yogurt are known as "yogurt cultures"”
• Internet evidence from www.amazon.com and www.culturesforhealth.com offering “yogurt culture” to make yogurt
• Internet evidence from www.livestrong.com discussing the health benefits of “yogurt culture”.
• Applicant’s own website stating that its goods contain “Live and Active Yogurt Cultures: Lactobacillus bulgaricus and Streptococcus thermophilus are added to the milk. In addition, some DANNON cup yogurts contain a third culture called Lactobacillus acidophilus. These cultures are carefully cultivated in DANNON laboratories by expert yogurt technologists”.

 

Material obtained from the Internet is generally accepted as competent evidence.  See In re Fitch IBCA Inc., 64 USPQ2d 1058, 1060-61 (TTAB 2002) (accepting Internet evidence to show descriptiveness); TBMP §1208.03; TMEP §710.01(b).

 

Furthermore, 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).  Please see the attached registrations in which the descriptive wording was disclaimed:

 

• PARADISE YOGURT
• YOGURT MOUNTAIN
• YUMZ GOURMET FROZEN YOGURT
• CANTALOOP NATURAL FROZEN YOGURT
• PINK SWIRLS · LIVE CULTURED YOGURT ·
• HIGH CULTURE
• FREEZIAC LIVE CULTURE

 

A consumer encountering the mark THE YOGURT CULTURE COMPANY in connection with applicant’s goods/services would immediately understand the feature of the goods/services.  Because the mark immediately and directly conveys information about the applicant’s goods/services, registration is refused under Trademark Act Section 2(e)(1).

 

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

 

SUPPLEMENTAL REGISTER

 

A mark in an application under Trademark Act Section 1(b) is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use under 37 C.F.R. §2.76 has been filed.  37 C.F.R. §§2.47(d), 2.75(b); TMEP §§815.02, 1102.03.  When a Section 1(b) application is successfully amended to the Supplemental Register, the effective filing date of the application will be the date on which applicant met the minimum filing requirements of 37 C.F.R. §2.76(e) for the amendment to allege use.  37 C.F.R. §2.75(b); TMEP §§816.02, 1102.03.

 

Although registration on the Supplemental Register does not afford all the benefits of registration on the Principal Register, it does provide the following advantages:

                               

• The registrant may use the registration symbol ®;
• The registration is protected against registration of a confusingly similar mark under Trademark Act Section 2(d);
• The registrant may bring suit for infringement in federal court; and
• The registration may serve as the basis for a filing in a foreign country under the Paris Convention and other international agreements.

 

See 15 U.S.C. §§1052(d), 1091, 1094; TMEP §815.

 

If applicant chooses to respond to the refusal to register, then applicant must also respond to the following requirement.

 

DISCLAIMER REQUIRED

 

Applicant must disclaim the descriptive wording “COMPANY” apart from the mark as shown because it merely identifies applicant’s entity type as discussed above and is not source-identifying matter.  See 15 U.S.C. §§1052(e)(1), 1056(a); 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); TMEP §§1213, 1213.03(a). 

 

Applicant may submit the following standardized format for a disclaimer:

                       

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

 

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

 

A “disclaimer” is a statement that applicant does not claim exclusive rights to an unregistrable component of a mark; it does not affect the appearance of the mark.  TMEP§1213.  An unregistrable component of a mark includes wording and designs that are merely descriptive or generic of the goods and/or services, and is wording or an illustration that others would need to use to describe or show their goods and services in the marketplace.  15 U.S.C. §1052(e); see TMEP §§1209.03(f), 1213.03 et seq.

 

If applicant does not provide the required disclaimer, the USPTO can refuse to register the entire mark.  TMEP §1213.01(b).

 

If applicant has questions about its application or needs assistance in responding to this Office Action, please contact the assigned trademark examining attorney directly at the number below or at Tasneem.Hussain@uspto.gov. Please note, however, that substantive matters must be addressed in a formal manner; see below for further instructions on how to respond to this Office Action.

 

 

 

 

/Tasneem Hussain/

Trademark Examining Attorney

Law Office 105

(571) 272-8273

tasneem.hussain@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.

 

 

 

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION HAS ISSUED ON 2/8/2012 FOR

SERIAL NO. 85453594

 

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 2/8/2012 (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.