United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88123618
Mark: TASTY
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Correspondence Address: Michelle Mancino Marsh 1301 Avenue of the Americas, Floor 42
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Reference/Docket No. 039779
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 31, 2019
This Office action is in response to applicant’s communication filed on July 2, 2019.
SUMMARY OF ISSUES THAT APPLICANT MUST ADDRESS:
Descriptiveness Refusal –Final
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., 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)).
The applicant has applied to register the mark “TASTY” stylized for “Coffee; tea; spice blends; cake mixes; frozen confections; chocolate; Confectioners coatings in the nature of edible shellac coatings for foods; icing; fondants; candy sprinkles; mixes for candy making; edible adhesives for confectionery decorating; bread; rice; salsa; and dipping sauces.” In the initial Office action, the examining attorney determined that the mark was merely descriptive because the mark clearly identified a characteristic of the applicant’s goods. To support the descriptiveness finding, the examining attorney attached a dictionary definition and Internet evidence showing common use of the wording “tasty” in connection with coffee, confectionery and other food items to describe the goods as having good flavor or good taste.
In its response to the descriptiveness refusal, the applicant has argued that the evidence for the refusal is insufficient, asserting that the proposed mark is suggestive.
The examining attorney has reviewed the applicant’s position on the descriptiveness issue, but is unpersuaded. While the examining attorney agrees with the applicant’s statement of the well-established principle that the descriptiveness determination must be made in the context of the goods or services for which registration is sought, the examining attorney finds that this principle clearly supports the descriptiveness refusal in this case.
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., 695 F.3d 1247, 1254, 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).
In this case, the proper question is whether consumers familiar with the nature of the applicant’s goods would understand the mark “TASTY” to describe particular features of those goods. The examining attorney again concludes that the answer to this question is yes, with the applicant’s goods in International Class 30.
The applicant has specifically asserted in its response that the proposed mark is suggestive and that the existence of four third party registrations supports that the wording “TASTY” is suggestive. The examining attorney disagrees with the applicant’s arguments. The applicant is now also referred to the attached evidence further supporting that the proposed mark is merely descriptive of the applicant’s goods.
With regard to the relevance of the third-party evidence, it is well settled that although third-party registrations are not conclusive on the question of descriptiveness, they may properly be used to show that particular terms have commonly understood meanings, and that such terms have been selected to convey those meanings. See In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991). In this case, the examining attorney again finds that the third-party registration evidence is relevant to the descriptiveness determination. In the present case, the examining attorney finds that the third-party registration evidence is relevant to the descriptiveness determination and includes third party registrations for food items in International Class 30 in which the wording “TASTY” or wording which translates into “TASTY” in English is either disclaimed or the mark is registered on the Supplemental Register or on the Principal Register based on a claim of acquired distinctiveness.
To support its position that the wording “tasty” is suggestive, the applicant submitted four third party registrations for International Class 29 and 30 food items. The third party registrations referenced by the applicant are different from the applicant’s mark in that those marks contain other wording that makes the marks unitary or the mark is combined with another non-descriptive wording (TASTY6) so that a disclaimer is not necessary.
Moreover, attached are additional Internet evidence supporting that the wording “tasty” is merely descriptive of the applicant’s goods. Specifically, the evidence consists of website excerpts showing that “tasty” is in common use in connection with various food items such as coffee, tea, cake mix, spice blends, chocolates, breads and frozen confections to describe that the goods have good flavor. The attached website pages are only a small sample of a much larger number of such uses of the term “tasty” in this context.
1. The attached web excerpt for OneGreenPlanet providing 10 tasty coffee drinks” The wording “tasty” is used descriptively to refer to coffee drinks that have good taste. See http://www.onegreenplanet.org/vegan-food/10-tasty-coffee-drinks-to-curb-your-caffeine-craving/
2. The attached web excerpt from Lifehack listing 9 tasty teas to improve one’s health. The wording “tasty” is used in connection with teas to describe teas that have good flavor. See http://www.lifehack.org/articles/lifestyle/9-tasty-teas-improve-your-health.html
3. The attached web excerpt for a cake mix company Duncan Hines uses the term “tasty” to describe its cake mixes. It states that it offers “delicious and tasty cake mixes.” The term “tasty” is used descriptively to characterize its cake mixes as being delicious. See http://www.essorimport.com/en/produits/duncan-hines_/
4. The attached web excerpt for Gertrude Hawk, a chocolate wholesaler states that it provides “a full offering of tasty chocolates.” The wording “tasty” describes the good taste of its chocolates.
See http://www.gertrudehawkchocolates.com/wholesale/product-offerings
5. The attached web excerpt for Lift Chocolate describes its chocolates as “tasty chocolates.” The wording “tasty” is used in connection with chocolate to describe the taste of its chocolate. See http://www.liftchocolates.com/shipping-returns
6. The attached web excerpt for Mother Earth News provides recipes for breads and refers to them as “taste breads” and “tasty recipes.” See http://www.motherearthnews.com/real-food/recipes-for-no-knead-and-other-tasty-breads
7. The attached web excerpt for Unwritten provides a list of “tasty breads” from around the world. The wording “tasty” is used descriptively to refer to the good tasting breads around the world. See http://www.readunwritten.com/2016/11/01/an-a-to-z-of-breads-from-around-the-world/
8. The attached web excerpt for The Spice House provides information about a blend of spices it called “Greektown Seasoning.” It explains that its Greektown seasoning is a “tasty blend.” The wording “tasty” describes the taste of its spice blend. See http://www.thespicehouse.com/greektown-seasoning
9. The attached web excerpt for The Domestic Rebel states that a no-bake funfetti chocolate icebox cake is “sweet, simple and oh so tasty.” The wording “tasty” describes the taste of the frozen cake. See http://thedomesticrebel.com/
10. The attached web excerpt for Southern Living providing 30 homemade ice-cream recipes refers to these treats as “tasty treats.” See http://www.southernliving.com/food/entertaining/homemade-ice-cream-recipes
As the applicant stated, a mark is suggestive if some imagination, thought, or perception is needed to understand the nature of the goods and/or services described in the mark; whereas a descriptive term immediately and directly conveys some information about the goods and/or services. See Stoncor Grp., Inc. v. Specialty Coatings, Inc., 759 F.3d 1327, 1332, 111 USPQ2d 1649, 1652 (Fed. Cir. 2014) (citing DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251-52, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012)); TMEP §1209.01(a). In the present case, the evidence clearly supports that propose mark is merely descriptive of the applicant’s goods because the term immediately and directly conveys that the applicant’s goods taste good.
In light of the evidence of record in this case, the examining attorney finds that consumers who encounter the applicant’s mark in commerce in the context of the identified goods would immediately perceive the wording “TASTY” as identifying the fact that the applicant’s goods are tasty or taste good. And while the general principle is that all doubts as to descriptiveness must be resolved in favor of the applicant, in this case the examining attorney simply has no doubts with respect to the descriptiveness of the mark at issue.
Conclusion
Accordingly, for the above reasons, the examining attorney again concludes that the applied-for mark is merely descriptive of the identified services, and is unpersuaded by the applicant’s arguments to the contrary. Accordingly, the refusal to register under Section 2(e)(1) is hereby maintained and made FINAL.
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., 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)).
Response to Final Action
(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).
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.
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).
/Jenny Park/
Examining Attorney
Law Office 104
571-272-8857
jenny.park@uspto.gov
RESPONSE GUIDANCE