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:  January 06, 2021

 

This Office action is in response to applicant’s communication filed on December 10, 2020.

 

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). The Section 2(d) refusal is withdrawn.

 

SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE

 

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods.  TMEP §1209.01(b); see In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005); In re Gyulay, 820 F.2d 1216, 1217-18, 3 USPQ2d 1009, 1009-10 (Fed. Cir. 1987).  Determining whether a mark is merely descriptive is considered in relation to the identified goods and/or services, not in the abstract.  In re Bayer AG, 488 F.3d 960, 963-64, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007); In re Abcor Dev. Corp., 588 F.2d 811, 814, 200 USPQ 215, 217-18 (C.C.P.A. 1978); TMEP §1209.01(b). 

 

In addition, applicant’s claim of acquired distinctiveness in the application is a concession that the mark sought to be registered is merely descriptive of applicant’s goods.  In re Virtual Indep. Paralegals, LLC, 2019 USPQ2d 111512, at *9 (TTAB 2019) (citing Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 1358, 92 USPQ2d 1626, 1629 (Fed. Cir. 2009); Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 1577, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988); In re Am. Furniture Warehouse Co., 126 USPQ2d 1400, 1403 (TTAB 2018)).

 

APPLICANT’S EVIDENCE OF ACQUIRED DISTINCTIVENESS IS INSUFFICIENT

 

Applicant asserted in the application a claim of acquired distinctiveness under Section 2(f).  See 15 U.S.C. §1052(f).  The following evidence was provided in support of such claim:  use in commerce as of 2010; advertising and sales figures.  See 37 C.F.R. §2.41.

 

The amount and character of evidence needed to establish acquired distinctiveness depends on the facts of each case and particularly on the nature of the mark sought to be registered.  Roux Labs., Inc. v. Clairol Inc., 427 F.2d 823, 829, 166 USPQ 34, 39 (C.C.P.A. 1970); In re Chevron Intellectual Prop. Grp. LLC, 96 USPQ2d 2026, 2030 (TTAB 2010); TMEP §1212.01.  An applicant’s evidentiary burden of showing acquired distinctiveness increases with the level of descriptiveness of the mark sought to be registered; a more descriptive term requires more evidence.  Royal Crown Co. v. Coca-Cola Co., 892 F.3d at 1365, 127 USPQ2d at 1045 (citing In re Steelbuilding.com, 415 F.3d 1293, 1300, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005)).

 

Applicant provided evidence of high sales figures and significant advertising expenditures for applicant’s goods to support the claim that the applied-for mark acquired distinctiveness under Trademark Act Section 2(f); however, this evidence is not dispositive of applicant’s claim.  See 15 U.S.C. §1052(f).  Applicant’s extensive sales and promotion may demonstrate the commercial success of applicant’s goods, but not that relevant consumers view the matter as a mark for these goods.  See In re Boston Beer Co., 198 F.3d 1370, 1371-73, 53 USPQ2d 1056, 1057-58 (Fed. Cir. 1999); In re Busch Entm’t Corp., 60 USPQ2d 1130, 1132-34 (TTAB 2000).

 

Similarly, applicant’s advertising expenditures are merely indicative of its efforts to develop distinctiveness; not evidence that the mark has acquired distinctiveness.  See In re Pennzoil Prods. Co., 20 USPQ2d 1753, 1757-58 (TTAB 1991).

 

In the present case, the word DESTRESS, alternatively spelled as “de-stress,” is defined as “To relieve one’s stress or tension; relax.” See the enclosed definition from thefreedictionary.com. Applicant’s specimen, moreover, indicates that its product is used for “natural stress relief” and “Relieves stress and anxiety.” Accordingly, the term DESTRESS must be deemed to be highly descriptive in that it directly describes a feature and characteristic of its goods.

 

In addition, the word DESTRESS, or its variant “de-stress,” is frequently used in the supplements industry to describe goods such as applicant’s. In this regard, see the enclosed excerpts from www.hopenwellness.com, www.zzquil.com, www.foodsco.net and www.maxlugavere.com, among others. Accordingly, applicant’s evidence of advertising and sales figures show merely that its use of the term DESTRESS constitutes but one among a number of similar such uses. Evidence of third-party usage, moreover, casts doubt upon whether applicant’s use of the word DESTRESS has been substantially exclusive, as required under Section 2(f). Indeed, applicant’s own evidence includes third-party usage of the term DESTRESS, or “de-stress,” in connection with dietary and nutritional supplements. In this regard, see the excerpts from www.amazon.com enclosed with applicant’s response dated December 10, 2020.

 

RESPONSE TO OFFICE ACTION

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

 

 

/Barney L. Charlon/

Trademark Examining Attorney

Law Office 104

(571) 272-9141

(571) 272-9104 (fax)

barney.charlon@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 January 06, 2021 for

U.S. Trademark Application Serial No. 88212228

 

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. 

 

 

Charlon, Barney

/Barney L. Charlon/

Trademark Examining Attorney

Law Office 104

(571) 272-9141

(571) 272-9104 (fax)

barney.charlon@uspto.

 

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 January 06, 2021, 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.”