To: | BuzzFeed, Inc. (tmdocket@arentfox.com) |
Subject: | U.S. Trademark Application Serial No. 88123692 - TASTY - 039779 |
Sent: | July 10, 2019 08:34:13 PM |
Sent As: | ecom101@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 Attachment - 12 Attachment - 13 Attachment - 14 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88123692
Mark: TASTY
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Correspondence Address: 1301 Avenue of the Americas, Floor 42
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Applicant: BuzzFeed, Inc.
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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 10, 2019
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.
APPLICATION STATUS
This Office action is in response to applicant’s communication filed on 07/02/2019.
The following requirement(s) have been satisfied and are now withdrawn: identification and classification. See TMEP §§713.02, 714.04.
SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
Registration is refused because the applied-for mark merely describes a feature and/or characteristic of the goods. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.
In the present case, applicant seeks to register the mark TASTY (stylized) for the following amended goods: Beer; Fruit juices and vegetable juices; bottled water; Non-alcoholic flavored carbonated beverages; Non-alcoholic beverages, namely, carbonated beverages; preparations in the nature of concentrates, syrups and powders used in the making of soft drinks; non-dairy milk, namely, coconut-based beverages not being milk substitutes
The term TASTY is defined as “Having a pleasing flavor; savory.” See previously attached definitions.
As applied to the goods, the mark immediately convey to the consumer a feature and/or characteristic of the goods, i.e., the goods have a pleasing flavor or is savory. The TTAB has found the term “tasty” to be merely descriptive of food. See In re Geo. A. Hormel & Co., 227 USPQ 813 (TTAB 1985) (“Clearly the term “tasty” would be merely descriptive of sausage under this test.”). The examining attorney also refers to the previously attached websites discussing tasty drinks and beverages.
Applicant argues that the mark is not merely descriptive since the Office has accepted similar TASTY marks for beverages in Class 32 on the Principal Register, without a disclaimer. The applicant relied on the following registrations:
TASTY WAVES (Reg. No. 5662656)
TASTY6 (Reg. No. 4782945)
TASTY SIPS (Reg. No. 1926158)
However these marks are distinguishable from applicant’s mark as these marks are unitary. If the matter that comprises the mark or relevant portion of the mark is unitary, no disclaimer of an element, whether descriptive, generic, or otherwise, is required. TMEP §1213.05.
The examining attorney refers to the attached third-party registrations for marks comprising of TASTY wherein the term TASTY is disclaimed or the marks are registered on the Supplemental Register or under Section 2(f). Third-party registrations featuring goods and/or services the same as or similar to applicant’s goods and/or services are probative evidence on the issue of descriptiveness where the relevant word or term is disclaimed, registered under Trademark Act Section 2(f) based on acquired distinctiveness, or registered on the Supplemental Register. E.g., In re Morinaga Nyugyo Kabushiki Kaisha, 120 USPQ2d 1738, 1745 (TTAB 2016) (quoting Inst. Nat’l des Appellations D’Origine v. Vintners Int’l Co., 958 F.2d 1574, 1581-82, 22 USPQ2d 1190, 1196 (Fed. Cir. 1992)); In re Box Solutions Corp., 79 USPQ2d 1953, 1955 (TTAB 2006).
The applied-for mark shows the wording in stylized lettering. Stylized descriptive or generic wording is registrable only if the stylization creates a commercial impression separate and apart from the impression made by the wording itself. See In re Cordua Rests., Inc., 823 F.3d 594, 606, 118 USPQ2d 1632, 1639-40 (Fed. Cir. 2016); In re Northland Aluminum Prods., Inc., 777 F.2d 1556, 1561, 227 USPQ 961, 964 (Fed. Cir. 1985); TMEP §1209.03(w). Common and ordinary lettering with minimal stylization, as in this case, is generally not sufficiently striking, unique, or distinctive as to make an impression on purchasers separate from the wording. See In re Sadoru Grp., Ltd., 105 USPQ2d 1484, 1487 (TTAB 2012).
In view of the foregoing, the refusal to register under Section 2(e)(1) of the Trademark Act is continued and made FINAL.
SUPPLEMENTAL REGISTER (Advisory) -Section 1(b) Application Not Eligible for Supplemental Register Until Acceptable Allegation of Use is Filed (Advisory)
If applicant files an acceptable allegation of use and also amends to the Supplemental Register, the application effective filing date will be the date applicant met the minimum filing requirements under 37 C.F.R. §2.76(c) for an amendment to allege use. TMEP §§816.02, 1102.03; see 37 C.F.R. §2.75(b). In addition, the undersigned trademark examining attorney will conduct a new search of the USPTO records for conflicting marks based on the later application filing date. TMEP §§206.01, 1102.03.
An amendment to allege use may be filed online via the Trademark Electronic Application System (TEAS). Filing an amendment to allege use is not considered a response to an Office action. 37 C.F.R. §2.76(h); TMEP §1104. An applicant must file a separate response to any outstanding Office action. TMEP §1104; see 37 C.F.R. §2.76(h).
PROPER RESPONSE TO FINAL ACTION - Full Refusal(s)/Requirement(s)
(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).
/Benji Paradewelai/
Trademark Attorney
Law Office 101
U.S. Patent & Trademark Office
Tel: (571) 272-1658
Email: benji.paradewelai@uspto.gov
RESPONSE GUIDANCE