| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 88261106 |
| LAW OFFICE ASSIGNED | LAW OFFICE 111 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/88261106/mark.png |
| LITERAL ELEMENT | PURETASTE FVP |
| STANDARD CHARACTERS | YES |
| USPTO-GENERATED IMAGE | YES |
| MARK STATEMENT | The mark consists of standard characters, without claim to any particular font style, size or color. |
| ARGUMENT(S) | |
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Response
This response answers the Office Action issued April 4, 2019 for Application Serial No. 88/261,106 (the “Application”) for the mark PURETASTE FVP (the “Mark”) filed by MycoTechnology, Inc. Please see the following remarks:
Information Request
The Examiner requested additional information regarding the nature of Applicant’s goods. Below are Applicant’s answers to the Examiner’s inquiries:
1. Applicant’s goods do not and will not contain enokitake mushrooms. 2. Attached as Exhibit A are promotional materials showing Applicant’s goods in connection with Applicant’s PURETASTE mark. 3. Applicant’s goods are plant based proteins for use in the food industry. Applicant believes the channels of trade will include food and beverage manufacturers seeking protein additives for food and beverage products. Applicant’s goods are plant-based proteins that can be used in a variety of applications in the food and beverage industry. Applicant’s vegetable rich media, which is briefly fermented in shitake mushrooms, enhances the flavor of food and beverage products and reduces bitterness while adding nutrients and protein. It can be added to extruded grain based snacks, snack foods, ready to drink beverages, sauces, cereal bars, processed meat applications, coffee, and other items. The primary substance of Applicant’s goods is the plant-based proteins. They are not a mushroom powder. As such, consumers would not associate the proteins with the “flammulina velutipes polysaccharides” or “flammulina velutipes powder.” Rather, Applicant uses the term to refer to “fermented vegetable protein.” Applicant has attached information about its product genre in Exhibit A. While the material submitted refers to PURETASTE solely, the PURETASTE FVP mark is intended to be used in a similar manner for the same goods. Deceptiveness
The Examiner claims they may refuse registration because the Mark may be deceptive under 15 U.S.C. § 1052(a). For the reasons below, Applicant submits that the Mark is not deceptive:
1. “FVP” is Not a Descriptive or Misdescriptive Term as Applied to Applicant’s Goods
For a mark to be deceptive under 15 U.S.C. § 1052(a), it must misdescribe the goods to which it is applied and purchasers must be likely to believe the misrepresentation. TMEP § 1203.02(b). Additionally, the misrepresentation must likely affect a significant portion of the relevant consumers’ decision to purchase the goods. Id. A term that is “deceptively misdescriptive” must describe an ingredient, quality, function, feature, purpose or use of the specified goods. TMEP §1209.04. If the term conveys a descriptive meaning that is both false and plausible, then the term is deceptively misdescriptive. Id. For an acronym or initialism to be considered descriptive, it must be merely descriptive of the applicant’s goods and it must be “substantially synonymous” with the merely descriptive wording it represents. TMEP § 1209.03(h); Modern Optics Inc. v. The Univis Lens Co., 110 U.S.P.Q. 293, 295 (C.C.P.A. 1956). An acronym or initialism is substantially synonymous with descriptive wording if:
1. The mark is an abbreviation or initialism for specific wording; 2. The specific wording is merely descriptive of applicant’s goods or services; and 3. The relevant consumers will recognize it as an abbreviation or initialism that is merely descriptive of the wording it represents.
See In re Thomas Nelson, Inc., 97 U.S.P.Q.2d at 1715-16 (citing In re Harco Corp., 220 U.S.P.Q. 1075, 1076 (T.T.A.B. 1984); see also Baroness Small Estates, Inc. v. Am. Wine Trade, Inc., 104 U.S.P.Q.2d 1224, 1230-31 (T.T.A.B. 2012) (holding “CMS” not substantially synonymous with cabernet, merlot, and syrah and therefore not merely descriptive for wine). In this case, the Examiner claims “FVP” is possibly deceptive because the acronym commonly identifies “flammulina velutipes polysaccharides” or “flammulina velutipes powder,” which is found in enokitake mushrooms. However, the relevant consumers would not recognize “FVP” as a descriptive term in relation to Applicant’s goods. The Application does not cover mushrooms; it covers proteins, which are used in the food industry as a protein additive. Given the nature of the goods at issue, consumers would not immediately understand the term “FVP” as describing that Applicant’s goods contain enokitake mushrooms. Additionally, a Google search for “FVP”, “FVP protein”, and “FVP additive” did not find any use of “FVP” in relation to products covering enokitake mushrooms within the first four pages of results (see Exhibit B). While the search results did include some use of “FVP”, the term was not used to mean “flammulina velutipes polysaccharides” or “flammulina velutipes powder.” Rather, it was used as a brand name for an automotive parts company, an acronym for the “Fruit-Vegetable-Protein” method for preparing a child’s lunch, and an abbreviation for the USDA’s “Fruit and Vegetable Programs” for example. Furthermore, the term “FVP” does not appear to have any dictionary definition (see Exhibit C). Additionally, while a search of an acronym finder found several different meanings, none of those meanings is related to Applicant’s goods. Id. Applicant submits that its use of FVP is suggestive and refers to “fermented vegetable protein.” This wording does not appear to be an industry term and does not appear to be commonly used for food additives or proteins. As such, Applicant submits that FVP is not deceptive for protein additives and further believes the wording is suggestive. Given the above, consumers either will be unfamiliar with any meaning of “FVP” in relation to Applicant’s goods or will recognize it as having different meanings other than identifying components of enokitake mushrooms. See Nw. Golf Co. v. Acushnet Co., 226 U.S.P.Q. 240 (T.T.A.B.) (finding deceptiveness unlikely in part because of the alternative meanings of the mark). Therefore, consumers would not recognize “FVP” as a descriptive term and they would need to inquire further to understand the connotation of “FVP” in relation to Applicant’s goods. As such, “FVP” is not deceptive because it is not misdescriptive of Applicant’s goods.
Disclaimer Requirement
The Examiner requests a disclaimer for the term “FVP” claiming it is merely descriptive of Applicant’s goods. Applicant respectfully submits that “FVP” is not descriptive and is, at most, suggestive of Applicant’s goods. A disclaimer may be required when an element of a mark is merely descriptive of the goods or services. TMEP § 1213.03(a). A mark is considered “merely descriptive” if it describes an ingredient, quality, function, feature, purpose or use of the specified services. TMEP § 1209.01(b). However, to be “merely descriptive,” the mark must do nothing but describe the goods or services. 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 11:19; see also In re Colonial Stores, Inc., 157 U.S.P.Q. 382, 384-385 (C.C.P.A. 1968) (finding that the mark SUGAR & SPICE is not merely descriptive of baked goods, but suggestive and noting that “the mark clearly does not tell the potential purchaser only what the goods are, their function, their characteristics or their use, or, of prime concern here, their ingredients”). The determination of whether a mark is merely descriptive must be made in relation to the goods or services for which registration is sought, not in the abstract. In re Chamber of Commerce, 102 U.S.P.Q.2d 1217, 1219 (Fed. Cir. 2012); In re Bayer, 82 U.S.P.Q.2d 1828, 1831 (Fed. Cir. 2007). Here, the Examiner claims “FVP” is descriptive because it identifies components of enokitake mushrooms. However, as explained above, Applicant’s proteins do not contain enotikake mushrooms. Therefore, “FVP” does not describe an ingredient, quality, function, feature, purpose or use of the specified goods. Additionally, for the reasons stated above, consumers would not immediately recognize “FVP” in relation to Applicant’s goods as a descriptive term. Therefore, “FVP” is suggestive at most.
Conclusion
In light of the above, Applicant respectfully requests the Examiner withdraw the disclaimer requirement. Additionally, Applicant submits that the Mark is not deceptive and that Application No. 88/261,106 is in condition for publication.
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| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_3898140130-20190528174159880190_._PURETASTE_FVP_-_Exhibit_A.pdf |
| CONVERTED PDF FILE(S) (4 pages) |
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| ORIGINAL PDF FILE | evi_3898140130-20190528174159880190_._PURETASTE_FVP_-_Exhibit_B.pdf |
| CONVERTED PDF FILE(S) (13 pages) |
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| \\TICRS\EXPORT17\IMAGEOUT17\882\611\88261106\xml5\ROA0007.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\882\611\88261106\xml5\ROA0008.JPG | |
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| \\TICRS\EXPORT17\IMAGEOUT17\882\611\88261106\xml5\ROA0010.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\882\611\88261106\xml5\ROA0011.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\882\611\88261106\xml5\ROA0012.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\882\611\88261106\xml5\ROA0013.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\882\611\88261106\xml5\ROA0014.JPG | |
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| \\TICRS\EXPORT17\IMAGEOUT17\882\611\88261106\xml5\ROA0016.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\882\611\88261106\xml5\ROA0017.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\882\611\88261106\xml5\ROA0018.JPG | |
| ORIGINAL PDF FILE | evi_3898140130-20190528174159880190_._PURETASTE_FVP_-_Exhibit_C.pdf |
| CONVERTED PDF FILE(S) (3 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\882\611\88261106\xml5\ROA0019.JPG |
| \\TICRS\EXPORT17\IMAGEOUT17\882\611\88261106\xml5\ROA0020.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\882\611\88261106\xml5\ROA0021.JPG | |
| DESCRIPTION OF EVIDENCE FILE | The evidence consists of promotional materials for Applicant's PURETASTE goods, Google search results, and screenshots from an acronym finder and dictionary. |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Claudia W. Stangle/ |
| SIGNATORY'S NAME | Claudia W. Stangle |
| SIGNATORY'S POSITION | Attorney of record, IL bar member |
| SIGNATORY'S PHONE NUMBER | 312-616-5600 |
| DATE SIGNED | 05/29/2019 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Wed May 29 12:01:26 EDT 2019 |
| TEAS STAMP | USPTO/ROA-XX.XX.XXX.XXX-2 0190529120126860227-88261 106-6203133281b1049d21eb0 6e7489c89c6d98d6e75c78357 7256baa9e60253531b8-N/A-N /A-20190529115606322343 |
| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
Response
This response answers the Office Action issued April 4, 2019 for Application Serial No. 88/261,106 (the “Application”) for the mark PURETASTE FVP (the “Mark”) filed by MycoTechnology, Inc. Please see the following remarks:
Information Request
The Examiner requested additional information regarding the nature of Applicant’s goods. Below are Applicant’s answers to the Examiner’s inquiries:
1. Applicant’s goods do not and will not contain enokitake mushrooms.
2. Attached as Exhibit A are promotional materials showing Applicant’s goods in connection with Applicant’s PURETASTE mark.
3. Applicant’s goods are plant based proteins for use in the food industry. Applicant believes the channels of trade will include food and beverage manufacturers seeking protein additives for food and beverage products.
Applicant’s goods are plant-based proteins that can be used in a variety of applications in the food and beverage industry. Applicant’s vegetable rich media, which is briefly fermented in shitake mushrooms, enhances the flavor of food and beverage products and reduces bitterness while adding nutrients and protein. It can be added to extruded grain based snacks, snack foods, ready to drink beverages, sauces, cereal bars, processed meat applications, coffee, and other items. The primary substance of Applicant’s goods is the plant-based proteins. They are not a mushroom powder. As such, consumers would not associate the proteins with the “flammulina velutipes polysaccharides” or “flammulina velutipes powder.” Rather, Applicant uses the term to refer to “fermented vegetable protein.”
Applicant has attached information about its product genre in Exhibit A. While the material submitted refers to PURETASTE solely, the PURETASTE FVP mark is intended to be used in a similar manner for the same goods.
Deceptiveness
The Examiner claims they may refuse registration because the Mark may be deceptive under 15 U.S.C. § 1052(a). For the reasons below, Applicant submits that the Mark is not deceptive:
1. “FVP” is Not a Descriptive or Misdescriptive Term as Applied to Applicant’s Goods
For a mark to be deceptive under 15 U.S.C. § 1052(a), it must misdescribe the goods to which it is applied and purchasers must be likely to believe the misrepresentation. TMEP § 1203.02(b). Additionally, the misrepresentation must likely affect a significant portion of the relevant consumers’ decision to purchase the goods. Id.
A term that is “deceptively misdescriptive” must describe an ingredient, quality, function, feature, purpose or use of the specified goods. TMEP §1209.04. If the term conveys a descriptive meaning that is both false and plausible, then the term is deceptively misdescriptive. Id. For an acronym or initialism to be considered descriptive, it must be merely descriptive of the applicant’s goods and it must be “substantially synonymous” with the merely descriptive wording it represents. TMEP § 1209.03(h); Modern Optics Inc. v. The Univis Lens Co., 110 U.S.P.Q. 293, 295 (C.C.P.A. 1956). An acronym or initialism is substantially synonymous with descriptive wording if:
1. The mark is an abbreviation or initialism for specific wording;
2. The specific wording is merely descriptive of applicant’s goods or services; and
3. The relevant consumers will recognize it as an abbreviation or initialism that is merely descriptive of the wording it represents.
See In re Thomas Nelson, Inc., 97 U.S.P.Q.2d at 1715-16 (citing In re Harco Corp., 220 U.S.P.Q. 1075, 1076 (T.T.A.B. 1984); see also Baroness Small Estates, Inc. v. Am. Wine Trade, Inc., 104 U.S.P.Q.2d 1224, 1230-31 (T.T.A.B. 2012) (holding “CMS” not substantially synonymous with cabernet, merlot, and syrah and therefore not merely descriptive for wine).
In this case, the Examiner claims “FVP” is possibly deceptive because the acronym commonly identifies “flammulina velutipes polysaccharides” or “flammulina velutipes powder,” which is found in enokitake mushrooms.
However, the relevant consumers would not recognize “FVP” as a descriptive term in relation to Applicant’s goods. The Application does not cover mushrooms; it covers proteins, which are used in the food industry as a protein additive. Given the nature of the goods at issue, consumers would not immediately understand the term “FVP” as describing that Applicant’s goods contain enokitake mushrooms.
Additionally, a Google search for “FVP”, “FVP protein”, and “FVP additive” did not find any use of “FVP” in relation to products covering enokitake mushrooms within the first four pages of results (see Exhibit B). While the search results did include some use of “FVP”, the term was not used to mean “flammulina velutipes polysaccharides” or “flammulina velutipes powder.” Rather, it was used as a brand name for an automotive parts company, an acronym for the “Fruit-Vegetable-Protein” method for preparing a child’s lunch, and an abbreviation for the USDA’s “Fruit and Vegetable Programs” for example.
Furthermore, the term “FVP” does not appear to have any dictionary definition (see Exhibit C). Additionally, while a search of an acronym finder found several different meanings, none of those meanings is related to Applicant’s goods. Id. Applicant submits that its use of FVP is suggestive and refers to “fermented vegetable protein.” This wording does not appear to be an industry term and does not appear to be commonly used for food additives or proteins. As such, Applicant submits that FVP is not deceptive for protein additives and further believes the wording is suggestive.
Given the above, consumers either will be unfamiliar with any meaning of “FVP” in relation to Applicant’s goods or will recognize it as having different meanings other than identifying components of enokitake mushrooms. See Nw. Golf Co. v. Acushnet Co., 226 U.S.P.Q. 240 (T.T.A.B.) (finding deceptiveness unlikely in part because of the alternative meanings of the mark). Therefore, consumers would not recognize “FVP” as a descriptive term and they would need to inquire further to understand the connotation of “FVP” in relation to Applicant’s goods.
As such, “FVP” is not deceptive because it is not misdescriptive of Applicant’s goods.
Disclaimer Requirement
The Examiner requests a disclaimer for the term “FVP” claiming it is merely descriptive of Applicant’s goods. Applicant respectfully submits that “FVP” is not descriptive and is, at most, suggestive of Applicant’s goods.
A disclaimer may be required when an element of a mark is merely descriptive of the goods or services. TMEP § 1213.03(a). A mark is considered “merely descriptive” if it describes an ingredient, quality, function, feature, purpose or use of the specified services. TMEP § 1209.01(b). However, to be “merely descriptive,” the mark must do nothing but describe the goods or services. 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 11:19; see also In re Colonial Stores, Inc., 157 U.S.P.Q. 382, 384-385 (C.C.P.A. 1968) (finding that the mark SUGAR & SPICE is not merely descriptive of baked goods, but suggestive and noting that “the mark clearly does not tell the potential purchaser only what the goods are, their function, their characteristics or their use, or, of prime concern here, their ingredients”). The determination of whether a mark is merely descriptive must be made in relation to the goods or services for which registration is sought, not in the abstract. In re Chamber of Commerce, 102 U.S.P.Q.2d 1217, 1219 (Fed. Cir. 2012); In re Bayer, 82 U.S.P.Q.2d 1828, 1831 (Fed. Cir. 2007).
Here, the Examiner claims “FVP” is descriptive because it identifies components of enokitake mushrooms. However, as explained above, Applicant’s proteins do not contain enotikake mushrooms. Therefore, “FVP” does not describe an ingredient, quality, function, feature, purpose or use of the specified goods.
Additionally, for the reasons stated above, consumers would not immediately recognize “FVP” in relation to Applicant’s goods as a descriptive term. Therefore, “FVP” is suggestive at most.
Conclusion
In light of the above, Applicant respectfully requests the Examiner withdraw the disclaimer requirement. Additionally, Applicant submits that the Mark is not deceptive and that Application No. 88/261,106 is in condition for publication.
