To: | LYONS, MARK JACK (mjl.matrix@yahoo.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88287395 - ORGANIC COCO TAN - N/A |
Sent: | 5/17/2019 3:52:10 PM |
Sent As: | ECOM125@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88287395
MARK: ORGANIC COCO TAN
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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: LYONS, MARK JACK
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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: 5/17/2019
THIS IS A FINAL ACTION.
This Final Office action is in response to applicant’s communication filed on April 25, 2019.
In a previous Office action dated April 24, 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 of applicant’s identified goods. In addition, applicant was advised of the following: that under Trademark Act Section 2(a) a portion of applicant’s mark maybe deceptive, unless applicant’s identification of goods were amended appropriately.
The trademark examining attorney maintains and now makes FINAL the refusal and requirement 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
Standard of Analysis for Section 2(e)(1) Refusal
“Whether consumers could guess what the product [or service] is from consideration of the mark alone is not the test.” In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
In the present case, applicant is seeking registration of ORGANIC COCO TAN for “Tanning gels; Tanning milks; Tanning oils; Cosmetic tanning preparations; Cosmetic sun-tanning preparations; Indoor sun tanning preparations; Self-tanning preparations; Skin gels for accelerating, enhancing or extending tans; Sun tan gel; Sun tan lotion; Sun tan oil; Sun-tanning oils; Sun-tanning oils and lotions; Sun-tanning preparations; Suntan creams”.
Based on the dictionary evidence from OxfordDictionaries.com attached to the April 24, 2019 Office action, the individual words in the applied-for mark is defined as follows:
ORGANIC: “(of food or farming methods) produced or involving production without the use of chemical fertilizers, pesticides, or other artificial agents”
COCO: “Coconut”
TAN: “(of a pale-skinned person) having golden-brown skin after exposure to the sun”
When these individual words are combined into one term, i.e., the applied-for mark ORGANIC COCO TAN, the meaning of the compound term is “coconut-derived ingredients produced or involving production without the use of chemical fertilizers, pesticides, or other artificial agents, which will aid in a person obtaining golden-brown skin after exposure to the sun. The individual words within the composite term retain their original meaning and no additional meaning is created by their combination. If the individual components of a mark retain their descriptive meaning in relation to the services, 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., In re Cannon Safe, Inc., 116 USPQ2d 1348, 1351 (TTAB 2015) (holding SMART SERIES merely descriptive of metal gun safes, because “each component term retains its merely descriptive significance in relation to the goods, resulting in a mark that is also merely descriptive”). As a result, the relevant public would perceive the mark as a whole to be descriptive when applied to the relevant services, as the individual terms used to comprise applicant’s mark are also used to describe the very process for which applicant seeks registration.
As the evidence attached to the April 24, 2019 Office action from numerous third-party competitive websites demonstrates, within the relevant field, the inclusion of coconut-derived ingredients is common in the marketplace for applicant’s identified goods.
Thus, the applied-for mark is descriptive as used in connection with applicant’s identified services.
Because applicant’s mark describes a feature, ingredient, characteristic, purpose, and/or function of applicant’s applied-for goods, the mark is merely descriptive. Therefore, registration is refused pursuant to Section 2(e) of the Trademark Act.
SECTION 2(a) ADVISORY – PORTION OF THE MARK MAY BE DECEPTIVE
Applicant’s mark includes the wording “ORGANIC”, which indicates that applicant’s goods have and/or exhibit, (or will have and/or will exhibit) the following feature or characteristic: that they will comprise organic ingredient, i.e., produced or involving production without the use of chemical fertilizers, pesticides, or other artificial agents.
This feature or characteristic is considered desirable for applicant’s goods because it indicates a lack of potentially harmful and/or toxic ingredients. See evidence attached to the April 24, 2019 Office action from RankandStyle.com and TrueNatural.com. 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. 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 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).
The undersigned examining attorney notes that applicant included an amended identification in his response, but only in the section labeled “ARGUMENTS”, and not in the identification field. As such, this cannot be accepted as a valid amendment.
Therefore, applicant may amend the identification to the following, if accurate:
Tanning gels; Tanning milks; Tanning oils; Cosmetic tanning preparations; Cosmetic sun-tanning preparations; Indoor sun tanning preparations; Self-tanning preparations; Skin gels for accelerating, enhancing or extending tans; Sun tan gel; Sun tan lotion; Sun tan oil; Sun-tanning oils; Sun-tanning oils and lotions; Sun-tanning preparations; Suntan creams; all the aforementioned made of organic ingredients.
RESPONSE OPTIONS
(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.
/Justin Berlin/
Justin Berlin
Trademark Examining Attorney
Law Office 125
(571) 272-5544
justin.berlin@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.