Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

FINAL OFFICE ACTION

 

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 25, 2019

 

This Office action is in response to applicant’s communication filed on July 2, 2019.

 

The refusal under Trademark Act Section 2(e)(1) is now made FINAL for the reasons set forth below.  See 15 U.S.C. §1052(e)(1); 37 C.F.R. §2.63(b).

 

SUMMARY OF ISSUES THAT APPLICANT MUST ADDRESS:

 

• Refusal under Section 2(e)(1)-Mark is Merely Descriptive

 

Descriptiveness Refusal –Final

 

Registration is refused because the applied-for mark merely describes a 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.

 

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 “Flavored liquors; spirits; wine; and pre-mixed non-beer based alcoholic beverages.”  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 alcoholic drinks to refer to drinks that have 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 alcoholic drinks in International Class 33.

 

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 finds that the third-party registration evidence is relevant to the descriptiveness determination and includes third party registrations for alcoholic drinks in International Class 33 in which the wording “TASTY” is either disclaimed or the mark is registered on the Supplemental Register. 

 

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 the connection with alcoholic drinks to describe that the drinks tastes good.  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 Advance Mixology providing recipes for 3 tasty drinks that can be made with 3 ingredients.  It recommends to “stick with recipes that are tasty, easy to make, and use supermarket-available ingredients.” The wording “tasty” is used descriptively to refer to drinks that good taste.  See http://advancedmixology.com/blogs/art-of-mixology/3-tasty-drinks-you-can-make-with-3-ingredients

2.     The attached web excerpt from romper.com introduces 7 tasty drinks that do not cause a horrible hangover.  The wording “tasty” is used to refer to alcoholic drinks that taste good. See  http://www.romper.com/p/7-tasty-drinks-that-wont-give-you-a-horrible-hangover-1603

3.     The attached web excerpt for Visit Aruba Blog lists 11 tasty drinks to try in Aruba.  The wording “tasty” is used to describe alcoholic cocktails with good taste. See http://www.visitaruba.com/blog/dining/11-tasty-drinks-to-try-in-aruba/

4.     The attached web excerpt for Mantastic Pursuits specifies 10 tasty alcoholic drinks that are under 150 calories.

5.     The attached excerpt for Country Wine & Spirits introduces a cream liqueur called “Rum Chata” and states that it can be “used in delicious holiday desserts or just some really tasty alcoholic drinks.”  The wording “tasty” is used in connection with an alcoholic drink to describe alcoholic drinks that taste good.

 

More importantly, the applicant’s own use of the term supports that the proposed wording “tasty” is descriptive in the context of alcoholic goods.  In the attached web excerpt, the applicant provides holiday party drink recipes and refers to them as “tasty drinks.”  See http://tasty.co/compilation/tasty-drinks-for-your-holiday-party  As such, the proposed mark “TASTY” when used in connection with the applicant’s alcoholic drinks in International Class 33 immediately and directly describes an attribute or characteristic of the applicant’s goods as being “tasty” or having good taste.

 

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

 

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 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

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on July 25, 2019 for

U.S. Trademark Application Serial No. 88123721

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Jenny Park/

Examining Attorney

Law Office 104

571-272-8857

jenny.park@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from July 25, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond.

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”