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: 8/6/2018

 

 

 

 

 

INTRODUCTION

 

This Office action is supplemental to and supersedes the previous Office action issued on January 24, 2018 in connection with this application.  Based on information and/or documentation in applicant’s response, the trademark examining attorney now issues the following new refusal:  Refusal - Section 2(a) of the Trademark Act.  See TMEP §§706, 711.02. 

 

In a previous Office action dated January 24, 2018, the trademark examining attorney required applicant to satisfy the following requirement:  amend the identification of goods to avoid a Section 2(a) deceptiveness refusal.

 

Based on applicant’s response, the trademark examining attorney is now refusing the applied-for mark under Section 2(a) of the Trademark Act.  

 

The following is a SUMMARY OF ISSUES that applicant must address:

 

            •  NEW ISSUE:  Refusal – Section 2(a) Deceptive

 

Applicant must respond to all issues raised in this Office action within six (6) months of the date of issuance of this Office action.  37 C.F.R. §2.62(a); see TMEP §711.02.  If applicant does not respond within this time limit, the application will be abandoned.  37 C.F.R. §2.65(a).

 

REFUSAL – SECTION 2(a) DECEPTIVE

 

Registration is refused because the applied-for mark consists of or includes deceptive matter in relation to the identified goods.  Trademark Act Section 2(a), 15 U.S.C. §1052(a).  

 

A term is deceptive when all three of the following criteria are met:

 

(1)       Is the term misdescriptive of the character, quality, function, composition or use of the goods?

 

(2)       If so, are prospective purchasers likely to believe that the misdescription actually describes the goods?

 

(3)       If so, is the misdescription likely to affect the purchasing decision of a significant portion of relevant consumers?

 

In re Tapco Int’l Corp., 122 USPQ2d 1369, 1371 (TTAB 2017) (citing In re Budge Mfg. Co., 857 F.2d 773, 775, 8 USPQ2d 1259, 1260 (Fed. Cir. 1988)); TMEP §1203.02(b); see also In re Spirits Int’l, N.V., 563 F.3d 1347, 1353, 1356, 90 USPQ2d 1489, 1492-93, 1495 (Fed. Cir. 2009) (holding that the test for materiality incorporates a requirement that a “significant portion of the relevant consumers be deceived”).

 

In this case, applicant’s mark includes the wording “SILVER”, indicating that the goods have or exhibit the following feature or characteristic:  silver or colloidal silver.  However, according to the evidence of record, applicant’s goods do not in fact have or exhibit this feature or characteristic. 

 

Consumers would be likely to believe this misdescription in the mark, because the attached Internet evidence shows that it is common in applicant’s industry for such goods to include colloidal silver, and consumers have come to expect such feature or characteristic.  Specifically, this evidence shows that cosmetic products containing colloidal silver helps restore healthy skin and treats skin conditions, such as acne, fungus, eczema, and psoriasis.  See the attached evidence from http://www.vermontcountrystore.com/silver-savior-soap/product/62613; http://facenearth.com/products/antioxidant-green-tea-chamomile-lavender-colloidal-silver-facial-cleanser-vegan; http://www.mybutterbar.com/blogs/skincare/collodial-silver-for-acne; http://www.hylunia.com/products/face-care/facial-toners/colloidal-silver-with-lavender-floral-water; and http://www.purebodysolutions.com/product/TVI-Colloidal.html. 

 

A misdescriptive feature or characteristic would be material to the purchasing decision of a significant portion of the relevant consumers when the evidence demonstrates that the misdescription would make the product or service more appealing or desirable to prospective purchasers.  In re White Jasmine LLC, 106 USPQ2d 1385, 1392 (TTAB 2013) (citing In re Juleigh Jeans Sportswear Inc., 24 USPQ2d 1694, 1698-99 (TTAB 1992)); TMEP §1203.02(d). 

 

In the present case, the attached Internet evidence discussed above and the previously attached evidence from www.amazingy.com; www.aloha.com; and www.brydie.com, shows that the misdescriptive feature or characteristic, namely colloidal silver, renders the goods more appealing or desirable because this ingredient soothes, calms, and rejuvenates skin from various skin conditions to achieve healthy and beautiful skin.  Thus, the misdescription is likely to affect a significant portion of the relevant consumers’ decision to purchase applicant’s goods.

 

Because applicant has indicated that the goods do not and will not contain silver or colloidal silver as an ingredient, and the evidence of record establishes that colloidal silver in cosmetics is a desirable ingredient because it helps treat skin conditions and it has skin repair qualities, consumers encountering applicant’s mark in connection with the identified goods are likely to believe that the goods contain such desirable ingredient.  Thus, the applied-for mark is deceptive in connection with the identified goods in this application. 

 

Furthermore, applicant argues that third party registrations contain the term “SILVER” without the identifications indicating that the goods contain silver.  However, applicant’s is respectfully reminded that third party registrations do not control on the issue of deceptiveness as neither the Trademark Examining Operation nor the Trademark Trial and Appeal Board are bound by past decisions of the Trademark Examining Operation.  See R. Neumann & Co. v. Overseas Shipments, Inc., 326 F.2d 786, 790, 140 USPQ 276, 280 (C.C.P.A. 1964) (quoting In re Helene Curtis Indus., Inc., 305 F.2d 492, 494, 134 USPQ 501, 503-04 (C.C.P.A. 1962)); In re Shapely, Inc., 231 USPQ 72, 75 (TTAB 1986).

 

Accordingly, registration is refused under Section 2(a) of the Trademark Act. 

 

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

 

 

Response Guidelines

 

For this application to proceed further, applicant must explicitly address each refusal and/or 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 specified in this Office action for responding to a refusal and should consider those options carefully.  To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements.  For more information and general tips on responding to USPTO Office actions, response options, and how to file a response online, see “Responding to Office Actions” on the USPTO’s website.

 

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 and the trademark will fail to register.  See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a); TMEP §§718.01, 718.02.  Additionally, the USPTO will not refund the application filing fee, which is a required processing fee.  See 37 C.F.R. §§2.6(a)(1)(i)-(iv), 2.209(a); TMEP §405.04.

 

When an application has abandoned for failure to respond to an Office action, an applicant may timely file a 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.  The petition must be filed within two months of the date of issuance of the notice of abandonment and may be filed online via the Trademark Electronic Application System (TEAS) with a $100 fee.  See 37 C.F.R. §§2.6(a)(15)(ii), 2.66(a)(1), (b)(1).

 

Assistance

 

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. §§2.62(c), 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.

 

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.  

 

 

 

Sahar Nasserghodsi

/Sahar Nasserghodsi/

Examining Attorney

Law Office 115

(571)272-9192

Sahar.Nasserghodsi@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 8/6/2018 FOR U.S. APPLICATION SERIAL NO. 87683150

 

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 8/6/2018, using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  A response transmitted through TEAS must be received before midnight Eastern Time of the last day of the response period.

 

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. 

 

Sahar Nasserghodsi

/Sahar Nasserghodsi/

Examining Attorney

Law Office 115

(571)272-9192

Sahar.Nasserghodsi@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.