To: | Krispy Krunchy Foods, L.L.C. (pctrademarks@perkinscoie.com) |
Subject: | U.S. Trademark Application Serial No. 88214828 - FRESHLY MADE · PERFECTLY CAJUN - 84275-4000 |
Sent: | July 31, 2019 10:31:59 AM |
Sent As: | ecom114@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88214828
Mark: FRESHLY MADE · PERFECTLY CAJUN
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Correspondence Address:
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Applicant: Krispy Krunchy Foods, L.L.C.
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Reference/Docket No. 84275-4000
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). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: July 31, 2019
This Office action is in response to applicant’s communication filed on July 9, 2019.
Upon further review, a new issue has arisen regarding the descriptiveness of the entire mark.
Section 2(e)(1) Refusal – Merely Descriptive
In the Office Action of March 5, 2019, the examining attorney required a disclaimer of FRESHLY MADE and CAJUN because such wording describes a feature and quality of the goods and services.
In the response of July 9, 2019, the applicant argued that the mark is a slogan and should not be disclaimed. “Applicant respectfully submits that a disclaimer is inappropriate here, as slogans should be treated as unitary marks pursuant to TMEP 1213.05(b)(i). As explained in this section of the TMEP, a slogan is a type of phrase and is defined as ‘a brief attention-getting phrase used in advertising or promotion’ and ‘a catch phrase used to advertise a product.’ The phrase ‘FRESHLY MADE PERFECTLY CAJUN’ is clearly a slogan, and indeed, the Examiner refers to the phrase as such in the Office Action. And this is not an unregistrable slogan, as the Examiner indicated that the phrase is capable of registration with the above-requested disclaimers. With that in mind, the TMEP makes clear that slogans should not be dissected for purposes of disclaimers. Id. (‘Slogans, by their attention-getting nature, are treated as unitary matter and must not be broken up for purposes of requiring a disclaimer.’) For these reasons, Applicant respectfully requests that the request for disclaimers of the terms ‘FRESHLY MADE’ and ‘CAJUN’ be withdrawn.”
However, if a mark consists entirely of a slogan that is generic, merely descriptive, merely informational, or that is otherwise not being used as a mark, registration must be refused. See In re Carvel Corp., 223 USPQ 65 (TTAB 1984) (holding AMERICA’S FRESHEST ICE CREAM for flavored ices, ice cream, etc., incapable of distinguishing applicant’s goods and unregistrable on the Supplemental Register); In re Wakefern Food Corp., 222 USPQ 76 (TTAB 1984) (holding WHY PAY MORE! for supermarket services to be an unregistrable common commercial phrase); see TMEP 1213.05(b)(iii).
Therefore, registration is now refused because the applied-for mark merely describes a feature, characteristic and quality of applicant’s goods and services. 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 applied to register the mark FRESHLY MADE · PERFECTLY CAJUN for “prepared meals consisting primarily of meat, fish, shrimp or poultry; meat; fried chicken; processed fish; shrimps, not live; poultry; mashed potatoes; French fried potatoes; processed red beans; seasoned coatings for meat, fish, shrimp or poultry; biscuits; biscuit sandwiches; breakfast sandwiches consisting primarily of biscuits, egg, sausage, bacon and cheese; burritos; empanadas; gravy; dipping sauces; macaroni and cheese; rice; jambalaya, namely, a spicy creole rice dish with a mixture of fish and meat such as shrimp, chicken, ham and spicy sausage; providing of food and drink; fast food restaurant services featuring meals consisting primarily of meat, fish, shrimp or poultry.”
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.
The previously attached online Collins American dictionary defined “FRESHLY MADE” as something that “has been recently made or done” and defined “CAJUN” as “ of or in the style of cooking of the Cajuns, characterized as by the use of pungent spices, sweet and hot peppers, and a well- browned roux to thicken and flavor sauces.” Moreover, the attached online Macmillan dictionary defines PERFECTLY as “used for emphasizing a particular quality.”
Taken together, consumers will view the phrase FRESHLY MADE PERFECTLY CAJUN as merely describing a quality and type of applicant’s goods and services, i.e., a particular quality of Cajun style or seasoned meals and stand-alone Cajun style or seasoned foods consisting of meat, fish, shrimp, poultry to include crispy and crunchy fried chicken, mashed potatoes, French fried potatoes, red beans, seasoned coatings for meat, fish, shrimp, poultry to include crispy and crunchy fried chicken, biscuits, biscuit sandwiches, breakfast sandwiches, burritos, empanadas, gravy, dipping sauces; macaroni and cheese; rice, jambalaya, and fast food restaurants that serve these Cajun style or seasoned foods to include crispy and crunchy chicken that are recently made or freshly made for consumption. Thus, the applicant’s mark touts that its goods and services feature perfectly Cajun style foods that are freshly made.
The foregoing makes clear that consumers would not see FRESHLY MADE PERFECTLY CAJUN as an indicator of source but rather as merely describing a feature, characteristic and quality of applicant’s goods and services.
For the above reasons, the proposed mark FRESHLY MADE PERFECTLY CAJUN directly and immediately conveys information about applicant’s goods and services. Accordingly, the proposed mark is merely descriptive, and registration is properly refused on the Principal Register under section 2(e)(1).
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
Not Eligible on Supplemental Register until an AAU Is Filed
A mark in an application under Trademark Act Section 1(b) is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use under 37 C.F.R. §2.76 has been filed. 37 C.F.R. §§2.47(d), 2.75(b); TMEP §§815.02, 1102.03. When a Section 1(b) application is successfully amended 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 the amendment to allege use. TMEP §§816.02, 1102.03; see 37 C.F.R. §2.75(b).
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.
How to respond. Click to file a response to this nonfinal Office action
/William T. Verhosek/
William T. Verhosek
Examining Attorney
U.S. Patent & Trademark Off
LO 114/571-272-9464
william.verhosek@uspto.gov
RESPONSE GUIDANCE