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: 4/1/2014

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues 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:

 

• Section 2(d) Likelihood of Confusion Refusals
• Section 2(e)(1) Descriptiveness Refusal
• Advisory regarding the Supplemental Register
• Request for Information Requirement
• Translation Requirement
• Additional Fee Requirement

 

SECTION 2(d) LIKELIHOOD OF CONFUSION REFUSALS

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 1412859, 3009366, 3009367, 3807912, and 3803654.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the enclosed registrations.

 

Applicant has applied to register the mark FABULOSO (standard character) for use in connection with the following goods:  “Aluminum foil” in International Class 006; “Disposable tableware, namely, knives, forks and spoons” in International Class 008; “Disposable napkins; Freezer bags; Garbage bags of plastic; General purpose plastic bags; Lawn and leaf disposal bags; Lunch bags; Microwave cooking bags; Paper bags; Plastic food storage bags for household use; Plastic or paper bags for household use; Plastic trash bags; Sandwich bags; Trash bags” in International Class 016; and “Household containers for foods; Plastic storage containers for household or domestic use; Servingware for serving food; Servingware for serving food and drinks” in International Class 021. 

 

The first registrant owns four registrations for the following:

1.               FABULOSO (typed drawing) (Registration No. 1412859 for “all purpose cleaning preparation with deodorizing properties” in International Class 003;

2.               FABULOSO OCEAN COOL SCENT MAR FRESCO LIQUID CLEANER LIMPIADOR LIQUIDO (plus design) (Registration No. 3009366) for “all purpose household cleaning preparation” in International Class 003;

3.               FABULOSO OCEAN LAVENDER FRESCA LAVANDA LIQUID CLEANER LIMPIADOR LIQUIDO (plus design) (Registration No. 3009367) for “all purpose household cleaning preparation” in International Class 003;

4.               FABULOSO OXY (standard character) (U.S. Registration No. 3807912) for “all-purpose cleaner” in International Class 003.

 

The second registration owns one registration for the following:

1.               OSO FABULOSO (standard character) (U.S. Registration No. 3803654) for “facial tissues; paper napkins; paper towels; toilet paper” in International Class 016.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the goods of the applicant and registrant.  See 15 U.S.C. §1052(d).  A determination of likelihood of confusion under Section 2(d) is made on a case-by case basis and the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) aid in this determination.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1349, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011) (citing On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1474 (Fed. Cir. 2000)).  Not all the du Pont factors, however, are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d at 1355, 98 USPQ2d at 1260; In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361-62, 177 USPQ at 567.

 

In this case, the following factors are the most relevant:  similarity of the marks, similarity and nature of the goods, and similarity of the trade channels of the goods.  See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.

 

Comparison of the Marks

 

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting 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).  Similarity in any one of these elements may be sufficient to find the marks confusingly similar.  In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b).

 

When comparing marks, the test is not whether the marks can be distinguished in a side-by-side comparison, but rather whether the marks are sufficiently similar in their entireties that confusion as to the source of the goods offered under applicant’s and registrant’s marks is likely to result.  Midwestern Pet Foods, Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 1053, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012); Edom Labs., Inc. v. Lichter, 102 USPQ2d 1546, 1551 (TTAB 2012); TMEP §1207.01(b).  The focus is on the recollection of the average purchaser, who normally retains a general rather than specific impression of trademarks.  L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975); TMEP §1207.01(b).

 

FABULOSO – U.S. Registration No. 1412859

FABULOSO OCEAN COOL SCENT MAR FRESCO LIQUID CLEANER

LIMPIADOR LIQUIDO – U.S. Registration No. 3009366

FABULOSO OCEAN LAVENDER FRESCA LAVANDA LIQUID CLEANER

LIMPIADOR LIQUIDO – U.S. Registration No.  300937

FABULOSO OXY – U.S. Registration No. 3807912

 

In this case, applicant’s mark is FABULOSO, and registrant owns a number of marks that all contain the term FABULOSO.  Thus, the marks not only appear and sound similar due to this shared term, but they also create a similar overall commercial impression in that the goods of the respective parties are “fabulous.”  See Descriptiveness Refusal, below, for a more detailed analysis of the meaning of the term “FABULOSO.” 

 

Furthermore, the fact that three of registrant’s marks contain additional wording does not diminish the similarity between the applied-for mark and the registered marks.  In fact, all of the additional wording in the marks is descriptive of the registrant’s goods, which means that these terms are less dominant in creating a commercial impression.  Generally, marks are compared in their entireties, but one feature of a mark may be more significant or dominant in creating a commercial impression.  See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii).  Matter that is descriptive of or generic for an applicant’s goods is typically less significant or less dominant in relation to other wording in a mark.  See In re Chatam Int’l Inc., 380 F.3d 1340, 1342-43, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004); In re Binion, 93 USPQ2d 1531, 1534 (TTAB 2009).

 

In the present case, the wording “OCEAN COOL SCENT MAR FRESCO LIQUID CLEANER

LIMPIADOR LIQUIDO” and “OCEAN LAVENDER FRESCA LAVANDA LIQUID CLEANER

LIMPIADOR LIQUIDO” has been disclaimed, which is a tacit admission by applicant of its descriptive nature.  See Bass Pro Trademarks, L.L.C. v. Sportsman’s Warehouse, Inc., 89 USPQ2d 1844, 1851 (TTAB 2008) (“Both parties disclaimed the exclusive right to use the term ‘Sportman’s Warehouse’ in their respective registrations in response to requirements by the Examining Attorneys during the examination of their respective applications.  Under these circumstances, the disclaimer may be considered an admission by the parties that the term ‘Sportsman’s Warehouse’ is merely descriptive.”).  

 

Furthermore, OXY is also descriptive of registrant’s cleaning products, because OXY means “containing oxygen”, and this quality is known to be an advantageous feature in cleaning products.  See http://www.merriam-webster.com/dictionary/oxy; http://www.wisegeek.org/what-is-an-oxygen-cleaner.htm.  Thus, all of the additional wording in registrant’s mark is less significant in terms of affecting the mark’s commercial impression, and renders the wording FABULOSO the more dominant element in the registered marks.  Therefore, because the dominant portion in registrant’s marks is identical to applicant’s mark, the marks are confusingly similar.

 

Finally, the fact that two of the registrations also contain a design element is not dispositive to the analysis.  In fact, for a composite mark containing both words and a design, the word portion may be more likely to be impressed upon a purchaser’s memory and to be used when requesting the goods.  Joel Gott Wines, LLC v. Rehoboth Von Gott, Inc., 107 USPQ2d 1424, 1431 (TTAB 2013) (citing In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999)); TMEP §1207.01(c)(ii); see In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908, 1911 (Fed. Cir. 2012) (citing CBS Inc. v. Morrow, 708 F. 2d 1579, 1581-82, 218 USPQ 198, 200 (Fed. Cir 1983)).  Thus, although such marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed.  In re Viterra Inc., 671 F.3d at 1366, 101 USPQ2d at 1911 (Fed. Cir. 2012) (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)). 

 

In this case, registrant’s design element is a square with a tile floor, mop, bucket, and pictorial representation of the different scents.  However, consumers in the marketplace would not reference registrant’s goods by the design elements; rather, they will refer to the goods of registrant as emanating from FABULOSO, thereby rendering the design element and descriptive wording in the registered marks less dominant and source-indicating than the word portion.  Thus, because the dominant portion of registrant’s mark is identical to the entirety of applicant’s mark, the applied-for mark does not create a distinct commercial impression and is therefore confusingly similar to registrant’s marks.

 

OSO FABULOSO

U.S. Registration No. 3803654

 

Here, registrant’s mark is OSO FABULOSO.  Thus, both the applied-for mark and the registered mark share the same term, FABULOSO, which means that they necessarily appear similar and sound similar.  Generally, marks may be confusingly similar in appearance where there are similar terms or phrases or similar parts of terms or phrases appearing in both applicant’s and registrant’s mark.  See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987) (COMMCASH and COMMUNICASH); In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (21 CLUB and “21” CLUB (stylized)); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (CONFIRM and CONFIRMCELLS); In re Collegian Sportswear Inc., 224 USPQ 174 (TTAB 1984) (COLLEGIAN OF CALIFORNIA and COLLEGIENNE); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983) (MILTRON and MILLTRONICS); In re BASF A.G., 189 USPQ 424 (TTAB 1975) (LUTEXAL and LUTEX); TMEP §1207.01(b)(ii)-(iii).

 

Furthermore, the fact that registrant’s mark contains an additional term, OSO, does not diminish the similarity between the marks.  In fact, the mere deletion of wording from a registered mark may not be sufficient to overcome a likelihood of confusion.  See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257 (Fed. Cir. 2010); In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii).  Applicant’s mark does not create a distinct commercial impression because it contains the same common wording as registrant’s mark, and there is no other wording to distinguish it from registrant’s mark.  Accordingly, the marks are confusingly similar for likelihood of confusion purposes.

 

Comparison of the Goods

 

The goods of the parties 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) (“[E]ven if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods.”); TMEP §1207.01(a)(i). 

 

The respective goods need only be “related in some manner and/or if the circumstances surrounding their marketing [be] 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)); Gen. Mills Inc. v. Fage Dairy Processing Indus. SA, 100 USPQ2d 1584, 1597 (TTAB 2011); TMEP §1207.01(a)(i).

 

FABULOSO – U.S. Registration No. 1412859

FABULOSO OCEAN COOL SCENT MAR FRESCO LIQUID CLEANER

LIMPIADOR LIQUIDO – U.S. Registration No. 3009366

FABULOSO OCEAN LAVENDER FRESCA LAVANDA LIQUID CLEANER

LIMPIADOR LIQUIDO – U.S. Registration No.  300937

FABULOSO OXY – U.S. Registration No. 3807912

 

Here, applicant’s goods are household products, including aluminum foil, disposable tableware, various household plastic bags, and household containers, and registrant’s goods are essentially all-purposes household cleaners.  Applicant’s goods are related to registrant’s cleaners, because many are the type that are often sold by the same companies who also make registrant’s type of products.  For example, If You Care sells aluminum foil, sandwich bags, and trash bags in addition to all-purpose cleaners.  See http://ifyoucare.com/product/recycled-aluminum-foil; http://ifyoucare.com/product/snack-and-sandwich-bags; http://ifyoucare.com/product/certified-compostable-trash-bags; http://ifyoucare.com/product/if-you-care-natural-dish-liquid.  Furthermore, Seventh Generation produces plastic bags and paper napkins similar to applicant’s goods in addition to all-purpose cleaners similar to registrant’s products.  See, e.g.,   http://shop.seventhgeneration.com/all-purpose-cleaner.html?sku=74; http://shop.seventhgeneration.com/Tall-Kitchen-Trash-Bags.html?sku=24; http://www.soap.com/p/seventh-generation-lunch-napkins-1-ply-66247?site=CA&utm_source=Google&utm_medium=cpc_S&utm_term=SG-085&utm_campaign=GoogleAW&CAWELAID=1323168446&utm_content=pla&adtype=pla&cagpspn=pla&noappbanner=true.  Likewise, Arm & Hammer makes plastic household bags and all-purpose cleaners.  See http://www.target.com/p/arm-hammer-bag-refills-72-pack/-/A-14232143#prodSlot=medium_1_0&term=arm & hammer; http://www.target.com/p/arm-hammer-scrub-free-soap-scum-remover-with-oxy-foaming-action-32-oz/-/A-12856511#prodSlot=medium_1_0&term=arm & hammer cleaner.  Finally, Williams Sonoma makes serve ware in addition to all-purpose cleaners. See http://www.williams-sonoma.com/products/williams-sonoma-essential-oils-all-purpose-cleaner-meyer-lemon/?pkey=ccleaning-supplies&cm_src=cleaning-supplies||NoFacet-_-NoFacet-_--_-; http://www.williams-sonoma.com/shop/tabletop-glassware-bar/tabletop-serveware/?cm_type=gnav#?N=4294966582+51.    

 

Moreover, not only do the same companies make applicant’s and registrant’s goods, but the goods of the respective parties are also of the type that travel in similar channels of trade.  For example, Green Depot sells food storage containers, disposable plates, disposable cutlery, and plastic bags similar to applicant’s goods in addition to all purposes cleaners similar to registrant’s products.  See  http://www.greendepot.com/greendepot/product.asp?s_id=0&prod_name=Green+Depot+All-Purpose+Cleaner&pf_id=GDCPAP32&dept_id=43700; http://www.greendepot.com/greendepot/product.asp?s_id=0&prod_name=Paper+Snack+and+Sandwich+Bags&pf_id=IFCSANDBAGS&dept_id=4800; http://www.greendepot.com/greendepot/dept.asp?s_id=0&dept_id=4800&page=1; http://www.greendepot.com/greendepot/dept.asp?s_id=0&dept_id=48100.  Similarly, Sur La Table sells serving ware for food and drinks and all-purpose cleaners in its kitchen store.  See http://www.surlatable.com/category/SCA-6263/Glass+Serveware?cleanSession=true&pCat=CAT-5785; http://www.surlatable.com/product/PRO-1269125/J+R+Watkins+Lemon+Natural+All+Purpose+Cleaner.  Likewise, Crate and Barrel sells food storage containers, sandwich bags, paper bags, and all-purpose cleaners.  See http://www.crateandbarrel.com/kitchen-and-food/food-containers-storage/1; http://www.crateandbarrel.com/better-life-what-ever-natural-all-purpose-cleaner/f51764.  Finally, Bed Bath and Beyond also sells applicant’s household products in addition to registrant’s all-purpose cleaners.  See http://www.bedbathandbeyond.com/store/category/serveware/10535/?pagFilterOpt=20&pagNum=1; http://www.bedbathandbeyond.com/store/product/vacmaster-reg-vacuum-packaging-zipperbags/131677?Keyword=bag; http://www.bedbathandbeyond.com/store/product/design-design-champagne-flourish-paper-tableware-entertaining-kit/1041935569?Keyword=paper+napkins; http://www.bedbathandbeyond.com/store/search/search.jsp?view=grid&_dyncharset=UTF-8&Keyword=trash%20bags; http://www.bedbathandbeyond.com/store/search/search.jsp?view=grid&_dyncharset=UTF-8&Keyword=%22all%20purpose%20cleaner%22.  Based on this evidence, it is clear that consumers are accustomed to finding applicant’s type of household products and registrant’s cleaners in the same types of specialty home stores. 

 

Ultimately, the goods in this case are highly related, because the evidence of record demonstrates that the goods of the respective parties are not only provided by the same companies under the same mark, but are also found in similar channels of trade.  Therefore, the goods of the respective parties are related for likelihood of confusion purposes.

 

OSO FABULOSO

U.S. Registration No. 3803654

 

Here, registrant’s goods are “facial tissues, paper napkins, paper towels, and toilet paper.”  These goods are related to applicant’s household goods, because they are the type of products that are often made by the same companies that make applicant’s goods.  For example, Seventh Generation makes plastic bags and paper napkins under the same mark.  See, e.g.,   http://shop.seventhgeneration.com/Tall-Kitchen-Trash-Bags.html?sku=24; http://www.soap.com/p/seventh-generation-lunch-napkins-1-ply-66247?site=CA&utm_source=Google&utm_medium=cpc_S&utm_term=SG-085&utm_campaign=GoogleAW&CAWELAID=1323168446&utm_content=pla&adtype=pla&cagpspn=pla&noappbanner=true.  Similarly, Pacific Green Products also makes disposable utensils and serve ware similar to applicant in addition to paper products similar to registrant under the same mark.  See http://www.pacificgreenproducts.com/sugarcane-plates-bowls/; http://www.pacificgreenproducts.com/utensils/; http://www.pacificgreenproducts.com/janitorial-products/paper-products/.  Accordingly, based on this evidence, it is clear that customers are accustomed to seeing applicant’s type of products sold under the same mark as registrant’s paper products.  Thus, the goods are related for likelihood of confusion purposes. 

 

In sum, given the fact that applicant’s mark contains the same dominant element, FABULOSO, as both of the registrant’s marks, and the goods of the applicant and registrants are highly related, there is a likelihood of confusion in the marketplace.  Therefore, applicant’s mark is refused registration pursuant to Section 2(d) of the Trademark Act.

 

Applicant should note the following additional ground for refusal.

 

SECTION 2(e)(1) DESCRIPTIVENESS REFUSAL

 

Registration is refused because the applied-for mark merely describes a feature or characteristic 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 immediately conveys knowledge of a quality, feature, function, or characteristic of [an applicant’s] goods.”  In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (quoting In re Bayer Aktiengesellschaft, 488 F.3d 960, 963, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)); TMEP §1209.01(b); see DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (quoting In re Abcor Dev. Corp., 588 F.2d 811, 814, 200 USPQ 215, 218 (C.C.P.A. 1978)).

 

Here, applicant’s mark is FABULOSO for various household products, including aluminum foil, disposable tableware, various household plastic bags, and household containers.  The term “FABULOSO” is a foreign term that means “fabulous” in English, and fabulous is descriptive of applicant’s products, because it is a laudatory term that means “extremely good.”  See http://education.yahoo.com/reference/dict_en_es/spanish/fabuloso; http://www.collinsdictionary.com/dictionary/english/fabulous.  According to the attached evidence, “fabulous” is often used to describe applicant’s type of household products.  See http://ladym33.expertscolumn.com/article/fabulous-aluminum-foil-and-things-you-can-do-it; http://www.collegegradcoupons.com/2012/10/solo-cup-review-giveaway-fabulous.html; http://www.amazon.com/Heavy-Weight-Plastic-Chocolate-Package/dp/B004XHXQ5W; http://tradewindtiaras.blogspot.com/2010/09/fabulous-product-stylish-green-and.html; http://www.homecanningguide.com/2013/05/fabulous-glass-storage-containers/;  http://www.partiesonline.com.au/disposable-party-drinkware-c-56_54.html.  Generally, “marks that are merely laudatory and descriptive of the alleged merit of a product are . . . regarded as being descriptive” because “[s]elf-laudatory or puffing marks are regarded as a condensed form of describing the character or quality of the goods.”  DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1256, 103 USPQ2d 1753, 1759 (Fed. Cir. 2012) (quoting In re The Boston Beer Co., 198 F.3d 1370, 1373, 53 USPQ2d 1056, 1058 (Fed. Cir. 1999)); see In re Nett Designs, Inc., 236 F.3d 1339, 1342, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (holding THE ULTIMATE BIKE RACK merely laudatory and descriptive of applicant’s bicycle racks being of superior quality); In re Dos Padres, Inc., 49 USPQ2d 1860, 1862 (TTAB 1998) (holding QUESO QUESADILLA SUPREME merely laudatory and descriptive of applicant’s cheese being of superior quality); In re Inter-State Oil Co., 219 USPQ 1229, 1230 (TTAB 1983) (holding PREFERRED merely laudatory and descriptive of applicant’s bird and squirrel repellant being liked better than other similar products); TMEP §1209.03(k).  In fact, “puffing, if anything, is more likely to render a mark merely descriptive, not less so.”  DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d at 1256, 103 USPQ2d at 1759.  Thus, such common expressions which can indicate nothing but high quality surely would not be indicative of origin to the purchasing public, but rather merely convey information about the characteristics of the goods. Accordingly, applicant’s mark is merely descriptive of its goods.

 

Moreover, the fact that applicant’s mark is a foreign word does not obviate the descriptiveness of the mark.  In fact, the foreign equivalent of a merely descriptive English word or term is also merely descriptive.  In re N. Paper Mills, 64 F.2d 998, 998, 17 USPQ 492, 493 (C.C.P.A. 1933).  Under the doctrine of foreign equivalents, marks with foreign words from modern languages are translated into English to determine descriptiveness.  TMEP §1209.03(g); see Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1377, 73 USPQ2d 1689, 1696 (Fed. Cir. 2005).

 

The doctrine is applied when it is likely that an ordinary American purchaser would “stop and translate” the foreign term into its English equivalent.  Palm Bay, 396 F.3d at 1377, 73 USPQ2d at 1696; cf. TMEP §1207.01(b)(vi)(A).  The ordinary American purchaser refers to “all American purchasers, including those proficient in a non-English language who would ordinarily be expected to translate words into English.”  In re Spirits Int’l, N.V., 563 F.3d 1347, 1352, 90 USPQ2d 1489, 1492 (Fed. Cir. 2009); see In re Thomas, 79 USPQ2d 1021, 1024 (TTAB 2006) (citing J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition §23:26 (4th ed. 2006), which states “[t]he test is whether, to those American buyers familiar with the foreign language, the word would denote its English equivalent.”).

 

Generally, the doctrine is applied when the English translation is a literal and exact translation of the foreign wording.  See In re Oriental Daily News, Inc., 230 USPQ 637, 638 (TTAB 1986) (holding Chinese characters that mean ORIENTAL DAILY NEWS merely descriptive of newspapers); In re Zazzara, 156 USPQ 348, 348 (TTAB 1967) (holding PIZZA FRITTE, the Italian equivalent of “fried buns,” incapable for fried dough); TMEP §1209.03(g).  In this case, applicant’s mark, FABULOSO, is an exact translation of the English word “fabulous,” and because “fabulous” is descriptive of a feature or characteristic of applicant’s household items, the applied-for mark is refused registration under Section 2(e)(1) of the Trademark Act as merely descriptive.

 

ADVISORY REGARDING THE SUPPLEMENTAL REGISTER

 

THIS ADVISORY ONLY APPLIES TO OVERCOMING THE SECTION 2(e)(1) DESCRIPTIVENESS REFUSAL.

 

Although an amendment to the Supplemental Register would normally be an appropriate response to the Section 2(e)(1) Descriptiveness Refusal ONLY, such a response is not appropriate in the present case.  The instant application was filed under Trademark Act Section 1(b) and is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use meeting the requirements of 37 C.F.R. §2.76(b), (c) has been timely filed.  37 C.F.R. §2.47(d); 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 files an acceptable allegation of use and also amends 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.  In addition, the undersigned trademark examining attorney will conduct a new search of the Office records for conflicting marks based on the later application filing date.  TMEP §§206.01, 1102.03.

 

To amend the application filing basis from an intent-to-use application under Trademark Act Section 1(b) to a use in commerce basis under Section 1(a), applicant must file, prior to approval of the mark for publication, an amendment to allege use that satisfies the requirements of 37 C.F.R. §2.76.  See 15 U.S.C. §1051(c); 37 C.F.R. §2.35(b)(8); TMEP §§806.01(b), 1103.

 

The following must be submitted in an amendment to allege use in order to amend an application to use in commerce under Section 1(a):

 

(1)       The following statement:  “Applicant is believed to be the owner of the mark and that the mark is in use in commerce.”

 

(2)       The date of first use of the mark anywhere on or in connection with the goods.

 

(3)       The date of first use of the mark in commerce as a trademark.

 

(4)       A specimen showing actual use of the mark in commerce for each class of goods for which use is being asserted.  If a single specimen supports multiple classes, applicant should indicate which classes the specimen supports rather than providing multiple copies of the same specimen.

 

(5)       A filing fee of $100 per class for each international class of goods for which use is being asserted (current fee information should be confirmed at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp).

 

(6)       Verification of the above (1) through (3) requirements in an affidavit or signed declaration under 37 C.F.R. §2.20.

 

See 37 C.F.R. §§2.6(a)(2), 2.56, 2.76(b), 2.193(e)(1); TMEP §§1104.08, 1104.10(b)(v).

 

Amendments to allege use can be filed online at http://www.gov.uspto.report/trademarks/teas/index.jsp.  Filing an amendment to allege use does not extend the deadline for filing a response to an outstanding Office action.  TMEP §1104.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusals by submitting evidence and arguments in support of registration.  In addition, applicant must respond to the requirements set forth below.

 

REQUEST FOR INFORMATION REQUIREMENT

 

To permit proper examination of the application, applicant must submit additional product information about the goods.  See 37 C.F.R. §2.61(b); In re AOP LLC, 107 USPQ2d 1644, 1650-51 (TTAB 2013); In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701-02 (TTAB 2003); TMEP §814.  The requested product information should include fact sheets, instruction manuals, and/or advertisements.  If these materials are unavailable, applicant should submit similar documentation for goods of the same type, explaining how its own product will differ.  If the goods feature new technology and no competing goods are available, applicant must provide a detailed description of the goods.

 

The submitted factual information must make clear how the goods operate, their salient features, and their prospective customers and channels of trade.  Conclusory statements regarding the goods will not satisfy this requirement.  In addition, applicant must address the following question:

 

1.               Does applicant intend to advertise its household products as “fabulous”?

 

Failure to comply with a request for information can be grounds for refusing registration.  In re AOP LLC, 107 USPQ2d at 1651; In re DTI P’ship LLP, 67 USPQ2d at 1701-02; TMEP §814.  Merely stating that information about the goods is available on applicant’s website is an inappropriate response to a request for additional information and is insufficient to make the relevant information of record.  See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).

 

TRANSLATION REQUIREMENT

 

Applicant must submit an English translation of all foreign wording in the mark.  37 C.F.R. §2.32(a)(9); see TMEP §809.  In the present case, the wording “FABULOSO” requires translation.

 

The following translation statement is suggested: 

 

The English translation of the word “FABULOSO” in the mark is “fabulous”. 

 

TMEP §809.03.

 

ADDITIONAL FEE REQUIREMENT

 

Applicant must submit an additional application processing fee of $50 per class because the application as filed did not meet the TEAS Plus application filing requirements.  See 37 C.F.R. §§2.6(a)(1)(iv), 2.22(a), (b); TMEP §§819.01 et seq., 819.04.  Specifically, applicant failed to meet the following application filing requirement: a translation of all non-English wording in the mark was not provided;

 

The additional fees are required even if applicant later corrects these application requirements.

 

RESPONSE GUIDELINES

 

For this application to proceed toward registration, applicant must explicitly address each refusal and requirement raised in this Office action.  If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register.  Applicant may also have other options for responding to a refusal and should consider such options carefully.  To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements.

 

If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end, the trademark will fail to register, and the application fee will not be refunded.  See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a), 2.209(a); TMEP §§405.04, 718.01, 718.02.  Where the application has been abandoned for failure to respond to an Office action, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to active status.  See 37 C.F.R. §2.66; TMEP §1714.  There is a $100 fee for such petitions.  See 37 C.F.R. §§2.6, 2.66(b)(1).

 

Because of the legal technicalities and strict deadlines involved in the USPTO application process, applicant may wish to hire a private attorney specializing in trademark matters to represent applicant in this process and provide legal advice.  Although the undersigned trademark examining attorney is permitted to help an applicant understand the contents of an Office action as well as the application process in general, no USPTO attorney or staff is permitted to give an applicant legal advice or statements about an applicant’s legal rights.  TMEP §§705.02, 709.06. 

 

For attorney referral information, applicant may consult the American Bar Association’s Consumers’ Guide to Legal Help at http://www.abanet.org/legalservices/findlegalhelp/home.cfm, an attorney referral service of a state or local bar association, or a local telephone directory.  The USPTO may not assist an applicant in the selection of a private attorney.  37 C.F.R. §2.11.

 

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 refusals and requirements 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.

 

 

 

/Brin Anderson Desai/

Brin Anderson Desai

Trademark Examining Attorney

Law Office 113

571-272-6399

Brin.Desai@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 the Trademark Electronic Application System (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 the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or 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/trademarks/teas/correspondence.jsp.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 4/1/2014 FOR U.S. APPLICATION SERIAL NO. 86164997

 

Your trademark application has been reviewed.  The trademark examining attorney assigned by the USPTO to your application has written an official letter to which you must respond.  Please follow these steps:

 

(1)  Read the LETTER by clicking on this link or going to http://tsdr.gov.uspto.report/, entering your U.S. application serial number, and clicking on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification. 

 

(2)  Respond within 6 months (or sooner if specified in the Office action), calculated from 4/1/2014, using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. 

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions. 

 

(3)  Questions about the contents of the Office action itself should be directed to the trademark examining attorney who reviewed your application, identified below. 

 

/Brin Anderson Desai/

Brin Anderson Desai

Trademark Examining Attorney

Law Office 113

571-272-6399

Brin.Desai@uspto.gov

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp. 

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.