To: | Modern Meadow, Inc. (tmdocket@oblon.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88312489 - BIOLEATHER - 800758US |
Sent: | 5/3/2019 9:13:49 AM |
Sent As: | ECOM120@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 Attachment - 38 Attachment - 39 Attachment - 40 Attachment - 41 Attachment - 42 Attachment - 43 Attachment - 44 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88312489
MARK: BIOLEATHER
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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: Modern Meadow, 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: 5/3/2019
The referenced application and Applicant’s February 26, 2019 voluntary amendment have been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
Search of Office’s Database of 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).
Section 2(a) Refusal: Deceptive
A term is deceptive when the following criteria are met:
(1) The term is misdescriptive of the composition of the goods;
(2) Prospective purchasers are likely to believe that the misdescription actually describes the goods; and
(3) The misdescription is 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).
In this case, applicant’s mark includes the wording “LEATHER”, indicating that the goods have or exhibit the following feature: comprised of leather. However, the identification of goods indicates that the goods do not in fact have or exhibit this feature. In particular, the identification of goods establishes that the goods are an alternative to leather rather than actually comprised of leather.
Consumers would be likely to believe the misdescription in the mark because it is common for fabric to be comprised of actual leather. See, e.g., attached evidence from www.rodenleather.com, www.wayfair.com, www.districtleathers.com, and www.moodfabrics.com. For this reason, consumers have come to expect such feature or characteristic for goods marked with the wording “LEATHER”.
A misdescriptive feature or characteristic 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 more appealing or desirable to prospective purchasers. 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).
In the present case, the misdescriptive feature or characteristic, namely, that the goods are comprised of leather, renders them more appealing or desirable because leather is more durable, sustainable, unique, and expensive than faux leather. See, e.g., attached evidence from http://buffalojackson.com, www.yardwoodleather.com, and www.garrettleather.com. Thus, the misdescription is likely to affect a significant portion of the relevant consumers’ decision to purchase applicant’s goods.
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration. Applicant must also respond to the following refusal and requirement.
Section 2(e)(1) Refusal in the Alternative – Deceptively Misdescriptive
The stated refusal refers to the following goods only and does not bar registration for the other goods identified in the application: “collagen-based leather alternative”.
Regarding the first part of the test, a mark is misdescriptive when the mark merely describes a significant aspect of the goods that the goods could plausibly possess but in fact do not. In re Hinton, 116 USPQ2d 1051, 1052 (TTAB 2015); see TMEP §1209.04. To be merely descriptive, a mark must immediately convey knowledge of a quality, feature, function, or characteristic of an applicant’s goods. In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (quoting In re Bayer Aktiengesellschaft, 488 F.3d 960, 963, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)); TMEP §1209.01(b).
In this case, the mark includes the wording “LEATHER”, which is “animal skin dressed for use”. See, e.g., attached Merriam-Webster Dictionary definition of leather. The wording describes a feature of fabric, namely, its material composition. See, e.g., attached evidence from www.rodenleather.com, www.wayfair.com, www.districtleathers.com, and www.moodfabrics.com. The identification of goods in the application establishes that the goods are not actually comprised of leather. Instead, they are an alternative to leather.
Regarding the second part of the test, the Board has applied the reasonably prudent consumer test in assessing whether consumers are likely to believe the misrepresentation. In re Hinton, 116 USPQ2d 1051, 1052 (TTAB 2015) (citing R. J. Reynolds Tobacco Co. v. Brown & Williamson Tobacco Corp., 226 USPQ 169, 179 (TTAB 1985)). A reasonably prudent consumer is likely to believe the representation because it is common for fabric to be comprised of leather.
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration. Applicant must also respond to the following requirement.
Amended Identification of Goods Required
The stated refusal refers to the following goods only and does not bar registration for the other goods and/or services: “collagen-based leather alternative”.
The classification and identification of goods in the application are:
Class 001: Biofabricated materials, namely, collagen for use in the manufacturing of a leather alternative, collagen-based leather alternative
Applicant may adopt any or all of the following identification, if accurate. Applicant must also adopt the appropriate international class number(s), and, if applicant adopts goods in more than one class, it must comply with the multiple-class application requirements set forth below. In the following, proposed amendments are in bold.
Class 001: Biofabricated materials, namely, collagen for use in the manufacturing of a leather alternative
Class 018: Imitation leather, namely, collagen-based leather alternative
For assistance with identifying and classifying goods in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
Multiple-Class Application Requirements
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule). The application identifies goods that are classified in at least 2 classes; however, applicant submitted a fee sufficient for only 1 class. Applicant must either submit the filing fee for the class not covered by the submitted fee or restrict the application to the number of classes covered by the fee already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
Response to Office Action Required to Avoid Partial Abandonment
(1) Deleting the goods to which the refusals and requirement pertain; or
(2) Filing a request to divide out the goods that have not been refused registration, so that the mark may proceed toward publication for opposition for those goods to which the refusal does not pertain. See 37 C.F.R. §2.87. See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide). If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to this Office action. 37 C.F.R. §2.87(e).
If applicant does not respond to this Office action within the six-month period for response, the following goods will be deleted from the application: collagen-based leather alternative.
The application will then proceed with the following goods only: Biofabricated materials, namely, collagen for use in the manufacturing of a leather alternative. See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).
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.
/Jeanine Gagliardi/
Examining Attorney
Law Office 120
571-272-3177
jeanine.gagliardi@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.