UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

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: 3/22/2019

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

Search Results

 

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

SUMMARY OF ISSUES:

 

• Section 2(e)(1) – Merely Descriptive Refusal
• Supplemental Register Advisory
• Claim of Acquired Distinctiveness Insufficient
• Amend Identification to Avoid Deceptiveness
• Identification of Goods Indefinite

 

Section 2(e)(1) – Merely Descriptive Refusal

 

Registration is refused because the applied-for mark merely describes a feature 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.  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 determination of whether a mark is merely descriptive is made in relation to an applicant’s goods, 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 is from consideration of the mark alone is not the test.”  In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).

 

A mark does not need to be merely descriptive of all the goods specified in an application.  In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); In re Franklin Cnty. Historical Soc'y, 104 USPQ2d 1085, 1089 (TTAB 2012).  “A descriptiveness refusal is proper ‘if the mark is descriptive of any of the [goods or] services for which registration is sought.’”  In re The Chamber of Commerce of the U.S., 675 F.3d at 1300, 102 USPQ2d at 1219 (quoting In re Stereotaxis Inc., 429 F.3d 1039, 1040, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005)).

 

Moreover, it is generally held that if the individual components of a mark retain their descriptive meaning in relation to the goods, 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 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, applicant has applied to register the mark “GREEN COMPLETE” for use in connection with “Nutritional supplements for human consumption; nutraceuticals for the treatment of oxidative stress, decreased immunity, and inflammatory conditions; nutraceuticals for use as a dietary supplement; dietary supplements; nutritional supplements; nutritional additives for medical purposes for use in foods and dietary supplements for human consumption; nutritional additives for use in feed for animals for medical purposes; dietary supplements for animal consumption; food supplements; food supplements, namely, anti-oxidants; homeopathic supplements, namely, diluted doses from the plant, mineral and animal kingdoms for human consumption; drink mixes, namely, dietary drink mix for use as a meal replacement, powdered fruit-flavored dietary supplement drink mix, nutritional supplement in the nature of a nutrient-dense, protein-based drink mix”.

 

The Merriam Webster Dictionary defines “GREEN” as “consisting of green plants and usually edible herbage”, and “COMPLETE” as “having all necessary parts, elements, or steps”. Therefore, the mark, when viewed in relation to the goods, immediately describes a feature of applicant’s goods; namely, supplements derived from green ingredients having all necessary nutrients.

 

Moreover, the attached Internet evidence from

 

• http://activatedyou.com/morning-complete/?src=shopping&gclid=EAIaIQobChMIl5GdlImW4QIVElqGCh2gDQY_EAQYASABEgK77_D_BwE

 

• http://www.organifishop.com/products/organifi-green-juice-1-bottle?variant=694934568977&gclid=EAIaIQobChMIl5GdlImW4QIVElqGCh2gDQY_EAQYAiABEgJrTvD_BwE

 

• http://www.thesynergycompany.com/pure-synergy?gclid=EAIaIQobChMIl5GdlImW4QIVElqGCh2gDQY_EAQYAyABEgJtIPD_BwE

 

• http://www.professionalsupplementcenter.com/Complete-1-Daily-Multi-60-Vegetable-Caps-by-Emerald.htm?referrer=googleshopping&gclid=EAIaIQobChMIl5GdlImW4QIVElqGCh2gDQY_EAQYBSABEgIfZ_D_BwE

 

• http://www.amazon.com/Sunny-Green-Total-Greens-Tablets/dp/B00020HULU

 

• http://www.amazon.com/GNC-Complete-Antioxidants-Standard-Vegetables/dp/B00B7PPR7I/ref=pd_sim_121_1/130-6461194-3777943?_encoding=UTF8&pd_rd_i=B00B7PPR7I&pd_rd_r=dec0205b-4cb7-11e9-88b9-21f8c111ccdc&pd_rd_w=bVnBp&pd_rd_wg=97p70&pf_rd_p=90485860-83e9-4fd9-b838-b28a9b7fda30&pf_rd_r=09G8G3Y8763MX7C4GF73&psc=1&refRID=09G8G3Y8763MX7C4GF73

 

• http://www.naturesway.com/Product-Catalog/Alive-Once-Daily-Women-s-Ultra-60-Tabs

 

• http://www.centrum.com/centrum-complete-multivitamin

 

demonstrates that “GREEN” is commonly used to describe supplements derived from green ingredients and “COMPLETE” is commonly used to describe supplements containing all necessary nutrients.

 

Moreover, applicant’s goods, available at http://www.vitacost.com/nutrex-hawaii-green-complete-superfood-powder-natural-vanilla-bean-6-7-oz-1?csrc=GPF-732894400504&csrc=GPF-PA&mtp=suaTMJli4-dc%7cpcrid%7c97670541853%7cproduct%7c732894400504&pgrid=16877534893&ptaid=pla-128654379133&gclid=EAIaIQobChMI6OqG1IuW4QIVjByGCh3tBgz9EAQYAyABEgJ2WvD_BwE&gclsrc=aw.ds, shows that applicant’s goods are derived from green ingredients and have all necessary nutrients to increase energy levels and boost immunity.

 

Therefore, the mark “GREEN COMPLETE”, as applied to the identified goods, merely describes a feature of applicant’s goods; namely, supplements derived from green ingredients having all necessary nutrients.

 

Supplemental Register Advisory

 

The applied-for mark has been refused registration on the Principal Register.  Applicant may respond to the refusal by submitting evidence and arguments in support of registration and/or by amending the application to seek registration on the Supplemental Register.  See 15 U.S.C. §1091; 37 C.F.R. §§2.47, 2.75(a); TMEP §§801.02(b), 816.  Amending to the Supplemental Register does not preclude applicant from submitting evidence and arguments against the refusal(s).  TMEP §816.04.

 

Claim of Acquired Distinctiveness Insufficient

 

Applicant has set forth two bases to support it claim of acquired distinctiveness. Both are insufficient.

 

First, an applicant may not base a claim of acquired distinctiveness under Trademark Act Section 2(f) on ownership of a registration on the Supplemental Register.  37 C.F.R. §2.41(a)(1); In re Canron, Inc., 219 USPQ 820, 822 n.2 (TTAB 1983); TMEP §1212.04(d). Thus, applicant’s 2(f) claim based on its ownership of U.S. Reg. No. 4456747 is insufficient.

 

Second, applicant asserted a claim of acquired distinctiveness under Trademark Act Section 2(f) based on applicant’s use of the mark in commerce with applicant’s goods for five years prior to the date on which the claim is made.  See 15 U.S.C. §1052(f).  However, as the attached evidence demonstrates, the allegation of five years’ use is insufficient to show acquired distinctiveness because the applied-for mark is highly descriptive of applicant’s goods.  See In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 1336-37, 116 USPQ2d 1262, 1265 (Fed. Cir. 2015); Alacatraz Media Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1765 (TTAB 2013); TMEP §1212.05(a).  Applicant may respond by providing additional evidence of acquired distinctiveness.  

 

An applicant bears the burden of proving that a mark has acquired distinctiveness under Trademark Act Section 2(f).  In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 1335, 116 USPQ2d 1262, 1264 (Fed. Cir. 2015) (citing In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1422 (Fed. Cir. 2005)); TMEP §1212.01.  “To show that a mark has acquired distinctiveness, an applicant must demonstrate that the relevant public understands the primary significance of the mark as identifying the source of a product or service rather than the product or service itself.”  In re Steelbuilding.com, 415 F.3d at 1297, 75 USPQ2d at 1422.  

 

In the present case, applicant’s claim of acquired distinctiveness based on five years’ use in commerce is insufficient to show acquired distinctiveness of the applied-for mark because the mark consists of highly descriptive wording that is commonly used in applicant’s industry to refer to nutritional supplements.

 

To support the claim of acquired distinctiveness, applicant may respond by submitting other evidence.  See TMEP §1212.02(g).  Such evidence may include “advertising expenditures, sales success, length and exclusivity of use, unsolicited media coverage, and consumer studies (linking the name to a source).”  In re Change Wind Corp., 123 USPQ2d 1453, 1467 (TTAB 2017) (quoting In re Steelbuilding.com, 415 F.3d 1293, 1300, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005)).  A showing of acquired distinctiveness need not consider all of these types of evidence; no single factor is determinative.  In re Steelbuilding.com, 415 F.3d at 1300, 75 USPQ2d at 1424; see TMEP §§1212.06 et seq.  Rather, the determination involves assessing all of the circumstances involving the use of the mark.  See In re Steelbuilding.com, 415 F.3d at 1300, 75 USPQ2d at 1424 (citing Thompson Med. Co., Inc. v. Pfizer Inc., 753 F.2d 208, 217, 225 USPQ2d 124, 131-32 (Fed. Cir. 1985)).

 

If applicant cannot submit additional evidence to support the claim of acquired distinctiveness, applicant may respond to the refusal by arguing in support of registration and/or amending the application to seek registration on the Supplemental Register.  See 15 U.S.C. §1091(a); 37 C.F.R. §§2.47, 2.75(a); TMEP §§801.02(b), 816.  If applicant amends the application to the Supplemental Register, applicant is not precluded from submitting evidence and arguments against this refusal.  TMEP §816.04.

 

Amend Identification to Avoid Deceptiveness

 

Applicant’s mark includes the wording “GREEN”, which indicates that applicant’s goods and/or services have and/or exhibit, (or will have and/or will exhibit) the following feature or characteristic:  green ingredients. 

 

This feature or characteristic is considered desirable for applicant’s goods because of the desired health benefits of green supplements. However, if some or all of the goods do not (or will not) in fact have or exhibit this feature or characteristic, then registration may be refused because the mark consists of or includes deceptive matter in relation to the identified goods and/or services.  See 15 U.S.C. §1052(a); In re Budge Mfg. Co., 857 F.2d 773, 8 USPQ2d 1259 (Fed. Cir. 1988); TMEP §1203.02-.02(b).

 

To avoid such refusal, applicant may amend the identification to specify that the goods and/or services possess this relevant feature or characteristic.  See TMEP §§1203.02(e)(ii), (f)(i), 1402.05 et seq.  However, merely amending the identification to exclude goods or services with the named feature or characteristic will not avoid a deceptiveness refusal.  TMEP §1203.02(f)(i).

 

Therefore, applicant may amend the identification in accordance with the suggested identification of goods below.

 

Identification of Goods Indefinite

 

The identification of goods is indefinite and must be clarified for the reasons set forth below.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Class 5

 

The wording “nutritional additives for medical purposes for use in foods and dietary supplements for human consumption” is unacceptable as indefinite. Applicant must clarify the nature of the goods (e.g. nutritional additives for medical purposes in the nature of dietary supplements for use in foods and dietary supplements for human consumption).

 

The wording “nutritional additives for use in feed for animals for medical purposes” is unacceptable as indefinite. Applicant must clarify the nature of the goods (e.g. nutritional additives in the nature of dietary supplements for use in feed for animals for medical purposes).

 

Additionally, as noted above, applicant must clarify that the goods contain green ingredients in order to avoid the issuance of a deceptiveness refusal.

 

Suggested Identifications

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

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.

 

Applicant may adopt the following identification, if acceptable:

 

Class 5

 

Nutritional supplements for human consumption; nutraceuticals for the treatment of oxidative stress, decreased immunity, and inflammatory conditions; nutraceuticals for use as a dietary supplement; dietary supplements; nutritional supplements; nutritional additives for medical purposes in the nature of dietary supplements for use in foods and dietary supplements for human consumption; nutritional additives in the nature of dietary supplements for use in feed for animals for medical purposes; dietary supplements for animal consumption; food supplements; food supplements, namely, anti-oxidants; homeopathic supplements, namely, diluted doses from the plant, mineral and animal kingdoms for human consumption; drink mixes, namely, dietary drink mix for use as a meal replacement, powdered fruit-flavored dietary supplement drink mix, nutritional supplement in the nature of a nutrient-dense, protein-based drink mix; all the foregoing made in whole or substantial parts of green ingredients

 

Assistance

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.

 

/Daniel Stringer/

Trademark Examining Attorney

Law Office 103

571.272.8975

daniel.stringer@uspto.gov

 

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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 3/22/2019 FOR U.S. APPLICATION SERIAL NO. 88242166

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 3/22/2019 (or sooner if specified in the Office action).  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.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.