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: 5/3/2019

 

 

THIS IS A FINAL ACTION.

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on April 18, 2019.

 

In a previous Office action(s) dated April 2, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following:  Trademark Act Section 2(e(1) for being merely descriptive.  In addition, applicant was advised of a pending Section 2(d) refusal based on a prior-filed application.

 

The following refusal(s) have been withdrawn:  the pending 2(d) refusal based on the prior-filed application has been reconsidered and withdrawn.  See TMEP §§713.02, 714.04. 

 

Further, the trademark examining attorney maintains and now makes FINAL the refusal(s) in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

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

 

SECTION 2(e)(1) REFUSAL – MERELY DESCRIPTIVE

 

Registration is refused because the applied-for mark “N.A. I.P.A.” merely describes a characteristic of applicant’s “Beer; Non-alcoholic beer; Non-alcoholic malt beverages” goods in International Class 32.  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)). 

 

Applicant has provided a statement indicating that the term “N.A.” is a term of art in the relevant trade or industry, meaning “non-alcoholic”. First Office Action, Apr. 2, 2019, p. 5. Additionally, beer brands and online magazine articles about beer use the designation to discuss non- alcoholic beverages. The attached evidence from WellBeing Brewing Company and Genesee Brewing Company show non-alcoholic beer products offered for sale with “N.A.” in the name. Id at pp 6, 12. An Esquire.com article discusses the evolution of “non-alcoholic (NA)” beer from substandard beverages to viable replacement options. Id. at p. 11. Examining attorney has attached additional evidence from various beer brands showing that “N.A.” is commonly used to indicate beer that is non-alcoholic. See attached. For example, Labatt Blue, at http://www.labattusa.com/beer/labatt-blue-na/, Beck’s, at http://www.crownbev.com/Main/index.php/products/non-alcoholic/becks-na.html, Anheuser- Busch, at http://www.beeradvocate.com/beer/profile/29/13733/, and Penn’s Best, at http://www.totalwine.com/beer/lager/american-style-lager/penns-best-non-alcoholic-beer/p/3224121?s=216&igrules=true, sell non-alcoholic beer labelled “NA”. See attached. Applicant’s identification of goods includes “non-alcoholic beer” and “non-alcoholic malt beverages”. Therefore, the term “N.A.” as used in the applied-for mark is merely descriptive of the non-alcoholic nature of the applied-for goods.

 

“I.P.A.” is a popular style of beer. RateBeer.com explains that “IPA” stands for “India Pale Ale ... has an intense hop flavor, a golden to copper color, and a medium malty body.” Id. at p. 7. A Wikipedia article titled “India pale ale” and an article on TheDailyMeal.com similarly describes “IPA” as “an initialism for India Pale Ale, a hoppy style of beer within the pale ale category.” Id. at p. 9-10. Southern Tier Distilling provides a historical background of IPAs, discussing how the British soldiers in India created this style of beer by adding “generous amounts of hops” to “better survive the voyage”. Id. at p. 8. Examining attorney has attached additional evidence from various food- and drink-related websites showing that “I.P.A.” is commonly used to describe a style of beer. See attached. For example, an article titled “What Does IPA Stand for” on HopandWine.com, at http://www.hopandwine.com/what-does-ipa-stand-for/, explains that “IPA stands for India Pale Ale,” which is a “strong and bitter” type of beer. See attached. An article titled “What is an IPA? A Complete Guide to the India Pale Ale” on Bon Appetit, at http://www.bonappetit.com/story/ipa-beer-styles, explains that “I.P.A.” refers to an “extremely broad style of beer … that explores the world of fruity flavors that can also come from hops.” See attached. Applicant’s goods include “beer” and “non-alcoholic beer”. Therefore, the term “I.P.A.” as used in the applied-for mark is merely descriptive of a style of the applied-for goods.

 

RESPONSE TO APPLICANT’S ARGUMENTS

 

The applicant’s arguments against the Section 2(e)(1) refusal are not persuasive.

 

First, applicant argues that the mark is intended as a double entendre, and reasserts its position from the application that the mark is a play off a popular style of beer called an “N.E. I.P.A.”, or a “northeast India pale ale”. First Office Action, Apr. 2, 2019, p. 5. Therefore, applicant asserts, the turn of phrase creates a unitary mark. A “double entendre” is an expression that has a double connotation or significance as applied to the goods and/or services. TMEP §1213.05(c); see In re Colonial Stores Inc. , 394 F.2d 549, 552-53, 157 USPQ 382, 384-85 (C.C.P.A. 1968) (finding SUGAR & SPICE a double entendre and not descriptive for bakery products because it evokes the nursery rhyme “sugar and spice and everything nice”). A mark that comprises a “double entendre” will not be refused registration as merely descriptive if one of its meanings is not merely descriptive in relation to the goods and/or services. TMEP §1213.05(c).

 

However, the “double entendre” does not apply in this situation because applicant’s “N.A. I.P.A.” has a standalone meaning, and does not have a double connotation with the separate term “N.E. I.P.A.”. The multiple meanings that make an expression a “double entendre” must be well-recognized by the public and readily apparent from the mark itself. See In re Calphalon Corp. , 122 USPQ2d 1153, 1163-64 (TTAB 2017) (quoting TMEP §1213.05(c)) (finding SHARPIN not a double entendre in relation to cutlery knife blocks with built-in sharpeners and affirming descriptiveness refusal); In re Brown-Forman Corp. , 81 USPQ2d 1284, 1287 (TTAB 2006) (finding GALA ROUGE not a double entendre in relation to wines and affirming disclaimer of ROUGE); In re The Place, Inc. , 76 USPQ2d 1467, 1470-71 (TTAB 2005) (finding THE GREATEST BAR not a double entendre in relation to restaurant and bar services and affirming descriptiveness refusal). Here, it is not readily apparent that “N.A. I.P.A.” is a double entendre when applied to the goods because it is not clear that “N.A.”, often used to mean “non-alcoholic,” is a play on “N.E.”, meaning “Northeast”. It is likely a consumer would more readily associate the wording “N.A. I.P.A.” with a non-alcoholic beer made in the India pale ale style.

 

Second, applicant argues “N.A. I.P.A.” is “only one letter different” from the intended double entendre “N.E. I.P.A.” and is therefore likely to be recognized as a play on words. However, the examining attorney has provided evidence that the “N.A.” portion of the applied for mark has its own independent meaning, “non-alcoholic,” that conveys a completely unique commercial impression from “Northeast”. First Office Action, Apr. 2, 2019, pp. 6, 11-12. Therefore, the difference of “only one letter,” as applicant says, is actually the difference between severable commercial impressions. A mark is merely descriptive if “it immediately conveys information concerning a feature, quality, or characteristic of [an applicant’s] goods or services.”  In re N.C. Lottery, 866 F.3d 1363, 1367, 123 USPQ2d 1707, 1709 (Fed. Cir. 2017) (citing In re Bayer Aktiengesellschaft, 488 F.3d 960, 963, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)); TMEP §1209.01(b); see DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (quoting In re Abcor Dev. Corp., 588 F.2d 811, 814, 200 USPQ 215, 218 (C.C.P.A. 1978)).  Here, “N.A. I.P.A.” immediately conveys the impression that applicant’s goods are non-alcoholic beer, which is, in fact, the case. Therefore, the applied-for mark is merely descriptive of the applied-for goods.

 

Third, applicant argues that “N.A. I.P.A” is “not itself a phrase used within the beer industry.” However, applicant’s own wording in the application indicates otherwise, stating that “N.A. appearing in the mark means or signifies or is a term of art for non-alcoholic in the relevant trade or industry or as used in connection with the goods/services listed in the application.” Therefore, in combination with the descriptive and/or generic wording “I.P.A.” meaning “India pale ale,” the wording means non-alcoholic India pale ale. 

 

Therefore, the refusal under Trademark Act Section 2(e)(1) is now made FINAL for the reasons set forth above.  See 15 U.S.C. §1052(e)(1); 37 C.F.R. §2.63(b).

 

PROPER RESPONSE TO FINAL OFFICE ACTION

 

Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond by providing one or both of the following:

 

(1)        a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements and/or resolves all outstanding refusals; and/or

 

(2)        an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 per class.

 

37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.

 

In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues.  TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  There is a fee required for filing a petition.  37 C.F.R. §2.6(a)(15).

 

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.  

 

 

 

/Alexandra Foster/

Trademark Examining Attorney

Law Office 117

Phone: (571) 272-5111

alexandra.foster1@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 5/3/2019 FOR U.S. APPLICATION SERIAL NO. 88271942

 

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 5/3/2019 (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.