To: | Fairbanks Group LLC (trademark@collenip.com) |
Subject: | U.S. Trademark Application Serial No. 88115708 - CAFFEINE - X834 |
Sent: | July 09, 2019 07:20:37 PM |
Sent As: | ecom114@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88115708
Mark: CAFFEINE
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Correspondence Address: COLLEN IP, INTELLECTUAL PROPERTY LAW, P. |
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Applicant: Fairbanks Group LLC
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Reference/Docket No. X834
Correspondence Email Address: |
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The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS) and/or Electronic System for Trademark Trials and Appeals (ESTTA). A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action.
Issue date: July 09, 2019
This FINAL Office action is being issued in response to applicant’s communication filed June 17, 2019. For the reasons outlined below the Section 2(e)(1) refusal is maintained and made FINAL. All arguments and evidence from prior Office actions are incorporated herein by reference. The requirements for a signed declaration and for amendment to the identification of goods have been satisfied.
TRADEMARK ACT SECTION 2(e)(1) REFUSAL – DESCRIPTIVENESS
Applicant proposes to register the wording “CAFFEINE” for, as amended, “eye cream; face and neck cream, non-medicated eye serum.”
However, the attached evidence shows that caffeine is an ingredient in skin and eye creams and serves an important function in skin cream. The attached evidence from The Derm Review indicates that caffeine is an ingredient in eye creams and is used to treat puffiness, bags, and dark circles around the eyes. Applicant’s specimen states that its eye cream can “revive” eyes because the eye cream is “caffeine-infused.” This evidence indicates that the word “CAFFEINE” describes an integral feature of applicant’s identified goods.
Applicant argues that “the significance of the term CAFFEINE requires thought and imagination to discover the nature of Applicant’s goods.” (June 17, 2019, Response to Office Action at 4.) “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). The question is not whether someone presented only with the mark could guess what the goods and/or services are, but “whether someone who knows what the goods and[/or] services are will understand the mark to convey information about them.” DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012) (quoting In re Tower Tech, Inc.,64 USPQ2d 1314, 1316-17 (TTAB 2002)); In re Mueller Sports. Med., Inc., 126 USPQ2d 1584, 1587 (TTAB 2018). Therefore, this argument is unpersuasive.
For the foregoing reasons, registration is refused despite applicant’s arguments to the contrary.
Generic Advisory
FINAL REFUSAL RESPONSE GUIDELINES
(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).
How to respond. Click to file a response to this final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB).
Shaila E. Lewis
Trademark Examining Attorney
Law Office 114
(571) 270-1527 (phone)
(571) 270-2527 (fax)
Shaila.Lewis@uspto.gov
RESPONSE GUIDANCE