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.  A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.

 

 

ISSUE/MAILING DATE: 4/2/2018

 

 

THIS IS A FINAL ACTION.

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on March 5, 2018.

 

In a previous Office action dated November 2, 2017, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(e)(1) – mark is merely descriptive of the identified goods. In addition, applicant was required to satisfy the following requirement:  amend the classification of goods.

 

Based on applicant’s response, the trademark examining attorney notes that the following requirement has been satisfied: classification of goods has been amended.  See TMEP §§713.02, 714.04. 

 

Further, the trademark examining attorney maintains and now makes FINAL the refusal discussed below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

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

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.

 

In addition to being merely descriptive, the applied-for mark appears to be generic in connection with the identified goods and, therefore, incapable of functioning as a source-identifier for applicant’s goods.  In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987); In re Empire Tech. Dev. LLC, 123 USPQ2d 1544 (TTAB 2017); see TMEP §§1209.01(c) et seq., 1209.02(a).  Under these circumstances, neither an amendment to proceed under Trademark Act Section 2(f) nor an amendment to the Supplemental Register can be recommended.  See TMEP §1209.01(c).

 

The applicant’s mark is BAR PICKLE for “Pickles” in International Class 29.

 

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods. TMEP §1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (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)). 

 

Determining the descriptiveness of a mark is done in relation to an applicant’s goods, the context in which the mark is being used, and the possible significance the mark would have to the average purchaser because of the manner of its use or intended use.  See In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (citing In re Bayer Aktiengesellschaft, 488 F.3d 960, 963-64, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)); TMEP §1209.01(b).  Descriptiveness of a mark is not considered in the abstract.  In re Bayer Aktiengesellschaft, 488 F.3d at 963-64, 82 USPQ2d at 1831.

 

As the identification of goods in the instant application shows, the applicant uses the term “PICKLE” in the mark to identify its goods, namely, “pickles”. Furthermore, the Internet evidence attached in the previous Office Action shows that “BAR” is defined as “a counter at which food or especially alcoholic beverages are served”. (See Office Action of 11/02/2017, Pages 48-68, incorporated herein by reference). Thus, the mark merely describes that the applicant’s goods, pickles, will be provided via a counter.

 

In addition, it is common in the food industry to feature pickles offered in counters that are described as bars. (See Office Action of 11/02/2017, Pages 2-47, incorporated herein by reference). For example:

 

• http://www.nrn.com/whats-hot/pickles-gain-prominence-restaurant-menus (“Guard features pickles in various ways on many of the menus at his eight concepts, but most prominently at his newest concept, Mister Tuna, where he offers an entire pickle bar.”);
• http://www.premierfoodsafety.com/blog/pickles-gain-prominence-on-restaurant-menus/ (“A restaurant chef and owner even opened a pickle bar in one of his restaurants.”);
• http://www.pitabarandgrill.com/about-us.htm  (“People often ask us why we have "bar" in our name when we serve no alcohol. It refers to our fresh pickle bar that is complimentary with every meal.”);
• http://www.bethesdamagazine.com/Bethesda-Magazine/Dining-Guide/index.php/name/Parkway-Deli-Restaurant/listing/28735/ (“Parkway features a bustling back dining room that makes this popular spot so much more than a deli. Longtime waitresses greet regular customers and kids with hugs during busy weekend breakfasts. All-you-can-eat pickle bar.”);
• http://www.theparkwaydeli.com/Menus/Restaurant.pdf (features a “pickle bar” that is “Complimentary while dinning in only”); and
• http://pumpernicksdeli.com/ (“We offer a variety of pickles, peppers, cucumber salad, and homemade sweet cabbage at our “Pickle Bar”.”).

 

Furthermore, the trademark examining attorney has attached additional evidence showing the applied-for-mark being used to identify a type of pickle. (See attached). For example:

 

• http://www.cooks.com/recipe/7p9l88td/bar-pickles.html (describes a recipe for making “bar pickles”);
• http://troegs.com/snack-bar-menu/ (lists “snack bar pickles” as part of their menu items);
• http://rivalscleveland.com/our-menus/main-menu/ (describes some menu items as containing “house-made bar pickles”);
• http://orderup.com/restaurants/the-boot-grill/delivery (lists “bar pickles” as part of a restaurant’s menu items); and
• http://www.grubhub.com/restaurant/tag-raw-bar-1423-larimer-st-ste-010-denver/289800 (lists “raw bar pickles” as part of a restaurant’s menu items).

 

Based on the foregoing, the applied-for-mark merely describes a type of pickle provided by the applicant.

 

RESPONSE TO APPLICANT’S ARGUMENTS

Applicant contends that, given the various different meanings of the term “bar” in the mark, the mark is not merely descriptive of the identified goods and, instead, is suggestive. In addition, applicant contends that the combination of the terms “bar” and “pickle” in the mark is a coined term that requires imagination and a leap of logic. The trademark examining attorney finds the applicant’s arguments unpersuasive.

 

The fact that the term “bar” in the mark may have other meanings is not dispositive in the present case. This is because descriptiveness is considered in relation to the relevant goods.  DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012).  “That a term may have other meanings in different contexts is not controlling.”  In re Franklin Cnty. Historical Soc’y, 104 USPQ2d 1085, 1087 (TTAB 2012) (citing In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979)); TMEP §1209.03(e). The evidence of record clearly shows that the term “bar” in the mark is descriptive of the applicant’s goods not only based on dictionary definitions, but also on the common use of the terms in the mark, as well as the mark as a whole, in applicant’s industry to describe a type of pickle.

 

Furthermore, the combination of the terms “bar” and “pickle” in the mark does not obviate the descriptiveness refusal. Generally, if the individual components of a mark retain their descriptive meaning in relation to the goods, the combination results in a composite mark that is itself descriptive and not registrable.  In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1516 (TTAB 2016) (citing In re Tower Tech, Inc., 64 USPQ2d 1314, 1317-18 (TTAB (2002)); TMEP §1209.03(d); see, e.g., Apollo Med. Extrusion Techs., Inc. v. Med. Extrusion Techs., Inc., 123 USPQ2d 1844, 1851 (TTAB 2017) (holding MEDICAL EXTRUSION TECHNOLOGIES merely descriptive of medical extrusion goods produced by employing medical extrusion technologies); In re Cannon Safe, Inc., 116 USPQ2d 1348, 1351 (TTAB 2015) (holding SMART SERIES merely descriptive of metal gun safes); In re King Koil Licensing Co., 79 USPQ2d 1048, 1052 (TTAB 2006) (holding THE BREATHABLE MATTRESS merely descriptive of beds, mattresses, box springs, and pillows). 

 

Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the goods is the combined mark registrable.  See In re Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968); In re Positec Grp. Ltd., 108 USPQ2d 1161, 1162-63 (TTAB 2013).

 

In this case, both the individual components and the composite result are descriptive of applicant’s goods and do not create a unique, incongruous, or nondescriptive meaning in relation to the goods. Specifically, applicant has put forth no explanation as to how a combination of the terms in the mark alters or changes the meanings of the terms in the mark so as to create a new meaning or altered meaning. To the contrary and as the evidence of record shows, the very same combination of terms in the mark is commonly used in the food industry to refer to a type of pickle. The trademark examining attorney also notes that the applicant has entered a disclaimer of the term “pickles” in the mark, which further supports a finding that the combination of terms in the mark do not create a unique, incongruous, or nondescriptive meaning in relation to applicant’s goods. (Applicant should refer to the discussion titled Advisory Regarding Disclaimer included below).

 

Lastly, applicant argues that any doubt regarding the mark’s descriptiveness should be resolved on applicant’s behalf.  E.g., In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 1571 4 USPQ2d 1141, 1144 (Fed. Cir. 1987); In re Grand Forest Holdings, Inc., 78 USPQ2d 1152, 1156 (TTAB 2006).  However, in the present case, the evidence of record leaves no doubt that the mark is merely descriptive.

 

Based on the foregoing, the refusal under Trademark Act Section 2(e)(1) is herein made FINAL.

 

ADVISORY REGARDING DISCLAIMER

The trademark examining attorney notes that applicant has disclaimed the term “PICKLES” in the mark. Applicant should note, however, that said term is not found in the mark and, instead, theterm appears in the mark in its singular form, “PICKLE”.

 

 

RESPONSE GUIDELINES

Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond by providing one or both of the following:

 

(1)       a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements and/or resolves all outstanding refusals; and/or

 

(2)       an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 per class.

 

37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.

 

In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues.  TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  There is a fee required for filing a petition.  37 C.F.R. §2.6(a)(15).

 

 

TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application.  See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820.  TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.  However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.  

 

 

If the applicant has any questions or requires assistance in responding to this Final Office Action, please telephone or email the assigned examining attorney.

 

 

/Keyla Gandara/

Trademark Examining Attorney

Law Office 117

Telephone: (571) 272-7164

Email: Keyla.Gandara@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 4/2/2018 FOR U.S. APPLICATION SERIAL NO. 87543014

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click 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)  TIMELY RESPONSE IS REQUIRED:  Please 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 4/2/2018 (or sooner if specified in the Office action).  A response transmitted through the Trademark Electronic Application System (TEAS) must be received before midnight Eastern Time of the last day of the response period.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.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.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@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.