To: | Yogurtland Franchising, Inc. (pto@crockett-crockett.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88243022 - YOGURTLAND - 544.29 |
Sent: | 3/20/2019 9:57:10 AM |
Sent As: | ECOM121@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88243022
MARK: YOGURTLAND
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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: Yogurtland Franchising, Inc.
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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: 3/20/2019
INTRODUCTION
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 FROM USPTO DATABASE FOR CONFLICTING MARKS
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:
· Sections 1, 2, and 45 Refusal—Applicant's Goods Not “Goods in Trade”
· Identification Amendment Required
SECTIONS 1, 2, AND 45 REFUSAL—APPLICANT'S GOODS NOT “GOODS IN TRADE”
“Goods in trade” are items that an applicant sells or transports in commerce for use by others. See Lens.com, Inc. v. 1-800 Contacts, Inc., 686 F.3d 1376, 1379-80, 103 USPQ2d 1672, 1675 (Fed. Cir. 2012); TMEP §1202.06. Incidental items that an applicant uses to conduct its business, such as letterhead, invoices, and business forms, are generally not “goods in trade,” because these items are only useful to the applicant and are not separately sold or distributed to consumers. TMEP §1202.06; see, e.g., Lens.com, Inc. v. 1-800 Contacts, Inc., 686 F.3d at 1380, 1382, 103 USPQ2d at 1675-76 (holding computer software used for ordering contact lenses not goods in trade where applicant solely provided online retail stores for eyewear products, and software was not sold separately and had no independent value apart from applicant’s primary service); In re S’holders Data Corp., 495 F.2d 1360, 1361, 181 USPQ 722, 723 (C.C.P.A. 1974) (holding reports on subscribers’ securities portfolios not goods in trade where applicant solely provided financial reporting services, and reports were not sold separately and had no independent value apart from applicant’s primary service).
Although determining whether an applicant’s goods are independent goods in trade, or merely incidental to the applicant’s services, is made on a case-by-case basis, factors to consider include whether:
(1) The goods are simply the conduit or necessary tool useful only to obtain applicant’s services;
(2) The goods are so inextricably tied to and associated with applicant’s services as to have no viable existence apart from them; and
(3) The goods are neither sold separately from nor have any independent value apart from applicant’s services.
In re Thomas White Int’l, Ltd., 106 USPQ2d 1158, 1161-62 (TTAB 2013) (citing Lens.com, Inc. v. 1-800 Contacts, Inc., 686 F.3d at 1382, 103 USPQ2d at 1676); TMEP §1202.06. None of these factors is necessarily dispositive. Lens.com, Inc. v. 1-800 Contacts, Inc., 686 F.3d at 1382, 103 USPQ2d at 1676; TMEP §1202.06.
In this case, applicant’s “Paper and cardboard cups for use in Applicant's store” are not independent goods in trade but rather are merely incidental to applicant’s primary goods and services because these goods are simply the conduit or necessary tool useful only to obtain applicant’s primary goods and services, are so inextricably tied to and associated with applicant’s primary goods and services as to have no viable existence apart from them, and are neither sold separately from nor have any independent value apart from applicant’s services.
Applicant's prior registration claims frozen yogurt and restaurant services featuring frozen yogurt and yogurt toppings. See attached registration. Further, the attached evidence from applicant's website makes clear that applicant’s primary services are restaurant services through which its primary goods of frozen yogurt are provided. In this case, applicant's paper and cardboard cups do not have use beyond holding the goods at the point of sale and are not separate goods in trade. That is, applicant's cups merely function as point-of-sale containers for applicant's primary frozen yogurt goods, which are provided via applicant's primary restaurant services.
Because applicant's goods in International Class 21 in the application do not appear to be “goods in trade”, the applied-for mark must be refused under Trademark Act Sections 1, 2, and 45.
Applicant cannot overcome this refusal by submitting a claim of acquired distinctiveness under Trademark Act Section 2(f) or amending the application to the Supplemental Register. TMEP §1202.06(b).
IDENTIFICATION AMENDMENT REQUIRED
Applicant may adopt the following wording, if accurate:
Class 21: Paper and cardboard cups for use in {indicate specific type of store} store
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
If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney. All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.
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.
/Justine N. Burke/
Justine N. Burke
Trademark Examining Attorney
Law Office 121
571-270-1631
Justine.Burke@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.