Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

NONFINAL 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).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

 

Issue date:  February 08, 2021

 

This Office action is in response to applicant’s communication filed on January 14, 2021.

 

As the following refusal remains outstanding, the refusal to register is continued.

 

SUPPLEMENTAL REGISTER

 

Registration is refused on the Supplemental Register because the applied-for mark is generic and thus incapable of distinguishing applicant’s goods.  Trademark Act Sections 23(c) and 45, 15 U.S.C. §§1091(c), 1127; see TMEP §§1209.01(c) et seq.

 

The test for determining whether an applied-for mark is generic is its primary significance to the relevant public.  Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 641, 19 USPQ2d 1551, 1553-54 (Fed. Cir. 1991) (citing In re Montrachet S.A., 878 F.2d 375, 376, 11 USPQ2d 1393-94 (Fed. Cir. 1989)).  Making this determination involves a two-step inquiry:

 

(1)       What is the genus of goods at issue?

 

(2)       Does the relevant public understand the designation primarily to refer to that genus of goods?

 

In re Cordua Rests., Inc., 823 F.3d 594, 599, 118 USPQ2d 1632, 1634 (Fed. Cir. 2016) (citing H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 990, 228 USPQ 528, 530 (Fed. Cir. 1986)); TMEP §1209.01(c)(i). 

 

Regarding the first part of the inquiry, the genus of the goods may be defined by an applicant’s identification of goods.  See In re Cordua Rests., Inc., 823 F.3d at 602, 118 USPQ2d at 1636 (citing Magic Wand Inc. v. RDB Inc., 940 F.2d at 640, 19 USPQ2d at 1552); see also In re 1800Mattress.com IP, LLC, 586 F.3d 1359, 1361, 1363, 92 USPQ2d 1682, 1682, 1684 (Fed. Cir. 2009).

 

In this case, the application identifies the goods as “Dietary, herbal, homeopathic, and nutritional supplements; all the aforesaid goods excluding the use of banana extract as an ingredient,” as amended, which adequately defines the genus at issue.

 

Regarding the second part of the inquiry, the relevant public is the purchasing or consuming public for the identified goods.  The Loglan Inst. Inc. v. The Logical Language Grp., 962 F.2d 1038, 1041, 22 USPQ2d 1531, 1533 (Fed. Cir. 1992) (quoting Magic Wand Inc. v. RDB Inc., 940 F.2d at 640, 19 USPQ2d at 1553).  In this case, the relevant public comprises ordinary consumers who purchase applicant’s goods, because there are no restrictions or limitations to the channels of trade or classes of consumers.  The attached evidence from www.hopenwellness.com, www.snapdeal.com and rosilindjukic.com shows that the wording “DESTRESS,” or “de-stress,” in the applied-for mark refers to an agent that is used to destress the user and thus the relevant public would understand this designation to refer primarily to that genus of goods.

 

In addition, the name of an ingredient, a key aspect, a central focus or feature, or a main characteristic of goods may be generic for those goods.  See In re Cordua Rests., Inc., 823 F.3d 594, 604, 118 USPQ2d 1632, 1637-38 (Fed. Cir. 2016) (affirming the Trademark Trial and Appeal Board’s holding of CHURRASCOS (a type of grilled meat) generic for restaurant services); In re Hikari Sales USA, Inc., 2019 USPQ2d 111514, at *13 (TTAB 2019) (holding ALGAE WAFERS generic for fish food); TMEP §1209.03(v).  Thus, a term does not need to be the name of a specific product and/or service to be found generic.  Any term that the relevant public understands to refer to the genus can be generic.  Royal Crown Co. v. Coca-Cola Co., 892 F.3d 1358, 1367, 127 USPQ2d 1041, 1046 (Fed. Cir. 2018) (quoting In re Cordua Rests., Inc., 823 F.3d at 603, 118 USPQ2d at 1637 (Fed. Cir. 2016)). In the present case, the term “DESTRESS,” or “de-stress,” refers to a key aspect, central feature and main characteristic of goods such as applicant’s and thus is incapable of serving as an indicator of the source of applicant’s goods.

 

See In re Virtual Indep. Paralegals, LLC, 2019 USPQ2d 111512, at *9 (TTAB 2019) (holding VIRTUAL INDEPENDENT PARALEGALS generic for paralegal, litigation support, and related services); In re Empire Tech. Dev. LLC, 123 USPQ2d 1544 (TTAB 2017) (holding COFFEE FLOUR generic for flour made from coffee berries); In re Emergency Alert Sols. Grp., LLC, 122 USPQ2d 1088, 1091-93 (TTAB 2017) (holding LOCKDOWN ALARM generic for training services focusing on the use of and response to lockdown alarms); In re Tires, Tires, Tires, Inc., 94 USPQ2d 1153, 1157 (TTAB 2009) (holding TIRES TIRES TIRES generic for retail tire store services); In re Candy Bouquet Int’l, Inc., 73 USPQ2d 1883, 1888 (TTAB 2004) (holding CANDY BOUQUET generic for “retail, mail, and computer order services in the field of gift packages of candy”); In re Cent. Sprinkler Co., 49 USPQ2d 1194, 1199 (TTAB 1998) (holding ATTIC generic for automatic sprinklers for fire protection used primarily in attics); In re Ricci-Italian Silversmiths, Inc., 16 USPQ2d 1727, 1729-30 (TTAB 1990) (holding ART DECO generic for flatware); In re Hask Toiletries, Inc., 223 USPQ 1254, 1255 (TTAB 1984) (holding HENNA ‘N’ PLACENTA generic for hair conditioner); see also In re Northland Aluminum Prods. Inc., 777 F.2d 1556, 1559-60, 227 USPQ 961, 963-64 (Fed. Cir. 1985) (holding BUNDT generic for cake mix); In re A La Vieille Russie, Inc., 60 USPQ2d 1895, 1900 (TTAB 2001) (holding RUSSIANART generic for art dealership services).

 

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 response to this nonfinal Office action.    

 

 

 

/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 February 08, 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 February 08, 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.”