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:  July 12, 2020

 

 

          A.         New issues supplemental office action

 

The product information is accepted and shows that the product would contain the NOIR grape. Please see the additional refusals below.

This Office action is supplemental to and supersedes the previous Office action issued on December 17, 2020 in connection with this application.  Based on information and/or documentation in applicant’s response, the trademark examining attorney now issues the following new refusal(s):  Material alteration and deceptiveness refusal. See TMEP §§706, 711.02. 

 

In a previous Office action(s) dated  December 17, 2020 the trademark examining attorney refused registration of the applied-for mark based on the following:  Trademark Act Section 2(d) for a likelihood of confusion with a registered mark, a descriptive refusal, possible varietal type of grape and .  In addition, applicant was required to satisfy the following requirement(s):  amend the identification of goods and/or services.

 

All issues from the previous action are maintained except the varietal refusal.

 

The following is a SUMMARY OF ISSUES that applicant must address:

 

            •   NEW ISSUES: 

 

1. Drawing change is material alteration
2. Full deceptive refusal

 

Applicant must respond to all issues raised in this Office action and the previous Office action, within six (6) months of the date of issuance of this Office action.  37 C.F.R. §2.62(a); see TMEP §711.02.  If applicant does not respond within this time limit, the application will be abandoned.  37 C.F.R. §2.65(a).

 

       B.        New drawing is material alteration

 

Applicant has requested to amend the mark in the application.  The USPTO cannot accept the proposed changes because they would materially alter the mark in the drawing filed with the original application or as previously amended.  37 C.F.R. §2.72(a)(2), (b)(2); TMEP §807.14.  Accordingly, the proposed amendment will not be entered; the previous drawing of the mark will remain operative.  See TMEP §807.17. 

 

The original drawing shows the mark as NOIR in standard character.  The proposed amended drawing shows the mark as NOIR with a star above the letter “I”. 

 

The USPTO cannot accept an amendment to a mark if it will materially alter the mark in the drawing filed with the original application, or in a previously accepted amended drawing.  37 C.F.R. §2.72(a)(2), (b)(2); TMEP §807.14.  An amendment to the mark is material when the USPTO would need to republish the mark with the change in the USPTO Trademark Official Gazette to fairly present the mark to the public.  In re Thrifty, Inc., 274 F.3d 1349, 1352, 61 USPQ2d 1121, 1123-24 (Fed. Cir. 2001) (citing In re Hacot-Columbier, 105 F.3d 616, 620, 41 USPQ2d 1523, 1526 (Fed. Cir. 1997)); TMEP §807.14. 

 

That is, an amendment is material if the altered mark does not retain “the essence of the original mark” or if the new and old forms do not “create the impression of being essentially the same mark.”  In re Hacot-Columbier, 105 F.3d at 620, 41 USPQ2d at 1526 (quoting Visa Int’l Serv. Ass’n v. Life-Code Sys., Inc., 220 USPQ 740, 743-44 (TTAB 1983)); see, e.g., In re Who? Vision Sys., Inc., 57 USPQ2d 1211, 1218 (TTAB 2000) (amendment from “TACILESENSE” to “TACTILESENSE” a material alteration); In re CTB Inc., 52 USPQ2d 1471, 1475 (TTAB 1999) (amendment of TURBO with a design to just the typed word TURBO without design a material alteration). 

 

When determining materiality, the addition of any element that would require a further search of the USPTO database for conflicting marks is also relevant.  In re Guitar Straps Online LLC, 103 USPQ2d 1745, 1747 (TTAB 2012) (citing In re Pierce Foods Corp., 230 USPQ 307, 308-09 (TTAB 1986)); In re Who? Vision Sys. Inc., 57 USPQ2d at 1218-19; TMEP §807.14.

 

In the present case, applicant’s proposed amendment would materially alter the mark in the drawing filed with the original application or as previously amended because a new search would need to be completed with the new design addition.

 

To avoid the application from abandoning, applicant must respond to this issue.  TMEP §807.17.  Applicant may respond by (1) withdrawing the request to amend the drawing, or (2) arguing that the proposed amendment is not a material alteration of the mark.

 

For more information about changes to the mark in the drawing after the application filing date, please go to the Drawing webpage.

 

            C.                Refusal to Register: Likelihood of Confusion

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 3762984  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  The registration was sent to the applicant and the refusal is maintained

 

         D.           Mark is Merely Descriptive: Refusal under Section 2(e)1.

 

Registration is refused because the applied-for mark merely describes a feature or ingredient of applicant’s goods and/or services.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03

The applicant applied to register the mark NOIR for wine and as applicant indicated in the response contains the pinot noir grape. The applicant argues that NOIR has a separate meaning apart from the wine. However, Descriptiveness is considered in relation to the relevant goods and/or services.  DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012).  “That a term may have other meanings in different contexts is not controlling.” Robinson v. Hot Grabba Leaf, LLC, 2019 USPQ2d 149089, at *5 (TTAB 2019) (citing In re Canine Caviar Pet Foods, Inc., 126 USPQ2d 1590, 1598 (TTAB 2018)); TMEP §1209.03(e).  “It is well settled that so long as any one of the meanings of a term is descriptive, the term may be considered to be merely descriptive.”  In re Mueller Sports Med., Inc., 126 USPQ2d 1584, 1590 (TTAB 2018) (quoting In re Chopper Indus., 222 USPQ 258, 259 (TTAB 1984)).

Determining the descriptiveness of a mark is done in relation to an applicant’s goods and/or services, the context in which the mark is being used, and the possible significance the mark would have to the average purchaser because of the manner of its use or intended use.  See In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (citing In re Bayer Aktiengesellschaft, 488 F.3d 960, 963-64, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)); TMEP §1209.01(b).  Descriptiveness of a mark is not considered in the abstract.  In re Bayer Aktiengesellschaft, 488 F.3d at 963-64, 82 USPQ2d at 1831.

1. The dictionary definition of the word NOIR is noted in the previous actions:
2. The translation of NOIR means dark or black which is also indicated to be a feature and characteristic of the goods, namely wine

The definitions are made of record by reference to herein

The applicant claims the mark is suggestive but it is a vital part of the pinot noir grape.

Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

 

          E.        Deceptive refusal

 

Registration is refused because the applied-for mark consists of or includes deceptive matter in relation to the identified goods.  Trademark Act Section 2(a), 15 U.S.C. §1052(a).

Applicant’s mark consists of the wording “NOIR”, 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:  The Pinot Noir Grape

A term is deceptive when all three of the following criteria are met:

 

(1)        Is the term misdescriptive of the character, quality, function, composition, or use of the goods [and/or services]?

 

(2)        If so, are prospective purchasers likely to believe that the misdescription actually describes the goods [and/or services]?

 

(3)        If so, is the misdescription likely to affect the purchasing decision of a significant portion of relevant consumers?

 

In re Tapco Int’l Corp., 122 USPQ2d 1369, 1371 (TTAB 2017) (citing In re Budge Mfg. Co., 857 F.2d 773, 775, 8 USPQ2d 1259, 1260 (Fed. Cir. 1988)); TMEP §1203.02(b); see also In re Spirits Int’l, N.V., 563 F.3d 1347, 1353, 1356, 90 USPQ2d 1489, 1492-93, 1495 (Fed. Cir. 2009) (holding that the test for materiality incorporates a requirement that a “significant portion of the relevant consumers be deceived”).

 

In this case, applicant’s mark consists of the wording “NOIR”, that indicates the goods contain Pinot Noir grapes.  However, according to the evidence of record and the identification of goods, applicant’s goods may not in fact contain this ingredient or component. 

 

Consumers would be likely to believe this misdescription in the mark, because the attached evidence from the Internet shows that it is common in applicant’s industry for such goods to include Pinot Noir grapes, and consumers have come to expect such ingredient or component.  Specifically, this evidence shows these grapes are popular, healthy  and also have a deep rich dark color.

 

A misdescriptive ingredient or component would be material to the purchasing decision of a significant portion of the relevant consumers when the evidence demonstrates that the misdescription would make the product or service more appealing or desirable to prospective purchasers.  See In re White Jasmine LLC, 106 USPQ2d 1385, 1392 (TTAB 2013) (citing In re Juleigh Jeans Sportswear Inc., 24 USPQ2d 1694, 1698-99 (TTAB 1992)); TMEP §1203.02(d). N

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

 

/Rossman, William/

William M. Rossman

Examing Attorney

Law Office 109

571-272-9029

William.Rossman@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 July 12, 2020 for

U.S. Trademark Application Serial No. 88259628

 

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. 

 

 

/Rossman, William/

William M. Rossman

Examing Attorney

Law Office 109

571-272-9029

William.Rossman@uspto.gov

 

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 July 12, 2020, 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.”