To: | Li Jingjing (michelle@huistore.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88213270 - BESSTOIL - N/A |
Sent: | 6/11/2019 2:37:26 PM |
Sent As: | ECOM125@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 Attachment - 15 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88213270
MARK: BESSTOIL
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Li Jingjing
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
ISSUE/MAILING DATE: 6/11/2019
THIS IS A FINAL ACTION.
This Office action is in response to applicant’s communication filed on 5/29/19.
In a previous Office action dated 3/3/19, the trademark examining attorney refused registration of the applied-for mark in relation to the goods in International Class 3, as the mark is merely descriptive of the Class 3 goods. Furthermore, the submitted specimen was unacceptable for International Class 3, and the trademark examining attorney issued a Sections 1 and 45 refusal. In addition, applicant was required to provide information regarding its Class 3 specimen and amend its identification of goods.
Based on applicant’s response, the trademark examining attorney notes that the requirement to provide information about the specimen has been satisfied. See TMEP §§713.02, 714.04. Additionally, the trademark examining attorney withdraws the Sections 1 and 45 refusal. See TMEP §§713.02, 714.04.
However, the applicant did not properly amend its identification of goods such that the identification is definite. Additionally, applicant amended its identification of goods in Class 3 to remove some of the goods which triggered a Section 2(e)(1) refusal, but many problematic goods remain in the identification.
Accordingly, the trademark examining attorney maintains and now makes FINAL the refusal in the summary of issues below. See 37 C.F.R. §2.63(b); TMEP §714.04. All relevant arguments and evidence included with the 3/3/19 Office Action are continued, maintained, and incorporated herein.
SUMMARY OF ISSUES:
PARTIAL SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
The stated refusal refers to the applicant’s goods identified in International Class 3 and does not bar registration for the other goods.
Registration is partially refused because the applied-for mark merely describes a characteristic of applicant’s goods identified in International Class 3. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.
Standard of Analysis for Section 2(e)(1) Refusal
“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 the present case, applicant is seeking registration of BESSTOIL for, in relevant part, “Air fragrancing preparations; Cosmetics; Cosmetics and make-up; Nail polish; Non-medicated soaps; Perfumery” in International Class 3.
The previously attached dictionary evidence shows that the word “OIL” refers to a “thick, viscous, typically flammable liquids that are insoluble in water but soluble in organic solvents”. See previously attached dictionary evidence. The attached Internet evidence shows that the applicant’s identified goods frequently are oils (such as the case with cosmetics and air fragrancing preparations), or contain oil as a primary ingredient. See attached Internet evidence.
Additionally, the previously attached dictionary evidence shows that the word “BEST” refers to something which is of an excellent or desirable quality. See previously attached dictionary evidence. Thus, the word “best” is laudatory because it merely describes the alleged merit of the applicant’s products. “Marks that are merely laudatory and descriptive of the alleged merit of a product [or service] are . . . regarded as being descriptive” because “[s]elf-laudatory or puffing marks are regarded as a condensed form of describing the character or quality of the goods [or services].” DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1256, 103 USPQ2d 1753, 1759 (Fed. Cir. 2012) (quoting In re The Boston Beer Co., 198 F.3d 1370, 1373, 53 USPQ2d 1056, 1058 (Fed. Cir. 1999)); see In re Nett Designs, Inc., 236 F.3d 1339, 1342, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (holding THE ULTIMATE BIKE RACK merely laudatory and descriptive of applicant’s bicycle racks being of superior quality); In re The Boston Beer Co., 198 F.3d at 1373-74, 53 USPQ2d at 1058-59 (holding THE BEST BEER IN AMERICA merely laudatory and descriptive of applicant’s beer and ale being of superior quality); TMEP §1209.03(k). In fact, “puffing, if anything, is more likely to render a mark merely descriptive, not less so.” DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d at 1256, 103 USPQ2d at 1759.
The applied-for mark therefore consists of a combination of the merely laudatory term “best” and the merely descriptive term “oil”. Generally, if the individual components of a mark retain their descriptive meaning in relation to the goods and/or services, the combination results in a composite mark that is itself descriptive and not registrable. In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1516 (TTAB 2016) (citing In re Tower Tech, Inc., 64 USPQ2d 1314, 1317-18 (TTAB (2002)); TMEP §1209.03(d); see, e.g., Apollo Med. Extrusion Techs., Inc. v. Med. Extrusion Techs., Inc., 123 USPQ2d 1844, 1851 (TTAB 2017) (holding MEDICAL EXTRUSION TECHNOLOGIES merely descriptive of medical extrusion goods produced by employing medical extrusion technologies); In re Cannon Safe, Inc., 116 USPQ2d 1348, 1351 (TTAB 2015) (holding SMART SERIES merely descriptive of metal gun safes); In re King Koil Licensing Co., 79 USPQ2d 1048, 1052 (TTAB 2006) (holding THE BREATHABLE MATTRESS merely descriptive of beds, mattresses, box springs, and pillows).
Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the goods and/or services is the combined mark registrable. See In re Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968); In re Positec Grp. Ltd., 108 USPQ2d 1161, 1162-63 (TTAB 2013).
In this case, both the individual components and the composite result are descriptive of applicant’s goods and/or services and do not create a unique, incongruous, or nondescriptive meaning in relation to the goods and/or services. Specifically, the combination of these terms does not create a commercial impression beyond that of oils which are of an excellent quality.
Accordingly, registration is refused under Section 2(e)(1) of the Trademark Act because the applied-for mark merely describes a feature or characteristic of the goods.
In the 3/3/19 Office action, the trademark examining attorney set out options for responding to this refusal.
APPLICANT MUST CLARIFY ITS CLASS 25 IDENTIFICATION OF GOODS
Certain wording in the identification is indefinite or overly broad and must be clarified. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1904.02(c), (c)(ii). Please see the notes and suggested amendments below.
Applicant should note that any wording in bold, in italics, and/or in ALL CAPS below offers guidance and/or shows
the changes being proposed for the identification of goods and services. If there is wording in the applicant’s version of the identification of goods and services
which should be removed, it will be shown with a line through it such as this: strikethrough. When making its amendments, applicant should enter them in
standard font, not in bold, in italics, underlined and/or in ALL CAPS.
Applicant may substitute the following wording, if accurate:
International Class 25: Hats; Jerseys; Knitwear, namely, {applicant must specify the type of clothing, e.g.,
shirts, dresses, sweaters} {applicant must actually specify the type of clothing. As stated above, information in brackets is
merely guidance, and should not simply be inserted into the identification without first reading the content of what is stated}; Scarves; Socks; Ties as clothing; Trousers; Trousers for
children; Ankle socks; Anklets; Golf trousers; Head scarves; Mufflers as neck scarves; Rain hats; Rain trousers; Short trousers; Silk scarves; Slipper socks; Small hats; Woollen socks
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
RESPONSE GUIDELINES
The application will then proceed for all of the listed Class 24 goods, as well as the following goods in International Class 25: “Hats; Jerseys; Scarves; Socks; Ties as clothing; Trousers; Trousers for children; Ankle socks; Anklets; Golf trousers; Head scarves; Mufflers as neck scarves; Rain hats; Rain trousers; Short trousers; Silk scarves; Slipper socks; Small hats; Woollen socks”.
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.
/Kyle Ingram/
Kyle Ingram
Attorney Advisor
Law Office 125
(571)272-5276
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.