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: 11/18/2012
NO
CONFLICTING MARKS
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, 2.65(a); TMEP §§711, 718.03.
The Office records have been searched and there are no similar registered or pending marks that would
bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.
SECTION 2(e)(1) DESCRIPTIVE REFUSAL
Registration is refused because the applied-for mark merely describes a feature 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.
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., DuoProSS Meditech Corp. v. Inviro Med.
Devices, Ltd., ___ F.3d ___, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (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., ___ F.3d ___, 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
Applicant’s mark is BANANA BITES for frozen confections, namely, chocolate dipped bananas. BANANA is defined as a long curved fruit with a yellow skin. BITES is the plural of the
term BITE and it is defined as to grip, cut off or tear with or as if with the teeth or jaws . The applicant features bananas that are eaten by tearing into them with the teeth or jaws (see dictionary definitions attached). Therefore the marks describes the goods.
The examining attorney attaches evidence in the nature of trademark registrations featuring the terms in question that were disclaimed apart from
the mark as shown, registered on the Supplemental Register or registered on the Principal Register with a 2(f) claim. The evidence is intended to support a
section 2(e)(1) descriptive refusal.
Therefore, for the reasons listed above, registration is refused under section 2(e)(1) of the Trademarks Act.
MAY NOT YET AMEND TO THE 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.
Should the applicant elect to respond to this office action the following informalities should also be addressed.
DISCLAIMER
Applicant must disclaim the descriptive wording “BANANA” apart from the mark as shown because it merely
describes an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services. See 15 U.S.C. §§1052(e)(1),
1056(a); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., ___ F.3d ___, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (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); TMEP §§1213,
1213.03(a).
Specifically, the attached evidence from the Internet shows this wording means a long curved fruit with a yellow skin. The applicant features chocolate dipped bananas. Therefore, the wording merely describes the
goods.
Applicant may submit the following standardized format for a disclaimer:
No claim is made to the exclusive right to use “BANANAS” 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 in the application record that applicant does not claim exclusive rights to an
unregistrable component of a mark; a disclaimer does not affect the appearance of the mark or physically remove disclaimed matter from the mark. TMEP §§1213,
1213.10. An unregistrable component of a mark includes wording and designs that are generic of an applicant’s goods. 15 U.S.C.
§1052(e); see TMEP §§1209.03(f), 1213.03 et seq. Such words or designs need to be freely
available for other businesses to market comparable goods or services and should not become the proprietary domain of any one party. See Dena Corp.
v. Belvedere Int’l, Inc., 950 F.2d 1555, 1560, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991); In re Aug. Storck KG, 218 USPQ 823, 825 (TTAB 1983).
If applicant does not provide the required disclaimer, the USPTO may refuse to register the entire
mark. See In re Stereotaxis Inc., 429 F.3d 1039, 1041, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005); TMEP
§1213.01(b).
The following cases further explain the disclaimer requirement: Dena
Corp. v. Belvedere Int’l Inc., 950 F.2d 1555, 21 USPQ2d 1047 (Fed. Cir. 1991); In re Brown-Forman
Corp., 81 USPQ2d 1284 (TTAB 2006); In re Kraft, Inc., 218 USPQ 571
(TTAB 1983).
The examining attorney attaches evidence in the nature of Trademark Registrations featuring the term in question that was disclaimed apart from the mark as shown. The evidence is intended to support a disclaimer requirement.
CLAIMED PRIOR REGISTRATION 2976228 IS CANCELLED
Applicant’s claim of ownership of U.S. Registration No. 2976228 will not be printed on any registration which may issue from this application because Office records show that the claimed
registration is cancelled. Only claims of ownership of active registrations are printed. See 37 C.F.R. §2.36;
TMEP §812.
CLAIMED PRIOR REGISTRATION NOS. 2976231 AND 2989531 NOT PERTINENT
Applicant’s claim of ownership of U.S. Registration Nos. 2976231 and 2989531 will not be printed on any registration that may issue from this
application because the marks are different. Only prior registrations of the same or similar marks are considered related registrations for purposes of an ownership
claim. See 37 C.F.R. §2.36; TMEP §812.
If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark
examining attorney. All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a
response to this Office action and will not extend the deadline for filing a proper response. See 37 C.F.R. §2.191; TMEP §§304.01-.02,
709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office
action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02,
709.06.
/Florentina Blandu/
Trademark Examining Attorney
Law Office 117
tel. (571) 272-9128
fax (571) 273-9128
florentina.blandu@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.
