Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  August 07, 2019

 

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on July 16, 2019.

 

In a previous Office action dated May 8, 2019, 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 and Section 2(e)(1) for a merely descriptive mark.  In addition, applicant was required to satisfy the following requirement: amend the identification of goods.

 

Based on applicant’s response deleting Class 5 from the application, the trademark examining attorney notes that the Section 2(d) Refusal regarding Registration Nos. 2307946 and 3035380 and advisory regarding Serial No. 86859971 are withdrawn.  See TMEP §§713.02, 714.04. Likewise, the requirement to provide a definite amended identification has been satisfied.  See id.  

 

Further, the trademark examining attorney maintains and now makes FINAL the refusal(s) and/or requirement(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 merely describes features or characteristics 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 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)). 

 

The determination of whether a mark is merely descriptive is made in relation to an applicant’s goods and/or services, not in the abstract.  DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012); In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); TMEP §1209.01(b); see, e.g., In re Polo Int’l Inc., 51 USPQ2d 1061, 1062-63 (TTAB 1999) (finding DOC in DOC-CONTROL would refer to the “documents” managed by applicant’s software rather than the term “doctor” shown in a dictionary definition); In re Digital Research Inc., 4 USPQ2d 1242, 1243-44 (TTAB 1987) (finding CONCURRENT PC-DOS and CONCURRENT DOS merely descriptive of “computer programs recorded on disk” where the relevant trade used the denomination “concurrent” as a descriptor of a particular type of operating system). 

 

“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).

 

Applicant’s contention that the marks are merely suggestive of a desired result of using applicant’s goods is unpersuasive. A mark is suggestive if some imagination, thought, or perception is needed to understand the nature of the goods and/or services described in the mark; whereas a descriptive term immediately and directly conveys some information about the goods and/or services.  See Stoncor Grp., Inc. v. Specialty Coatings, Inc., 759 F.3d 1327, 1332, 111 USPQ2d 1649, 1652 (Fed. Cir. 2014) (citing DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251-52, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012)); TMEP §1209.01(a).  In the instant case, as demonstrated below, “IMMUNE SUPPORT” immediately and directly conveys information about applicant’s goods, with no imagination required.

 

In the present case, applicant is seeking registration of IMMUNE SUPPORT for “tea shots, namely, beverages made of herbal tea; mixes for making tea; and mixes in the nature of concentrates, syrups or powders used in the preparation of tea based beverages” in Class 30 and “non-alcoholic drinks, namely, energy drinks, energy shots, tea-flavored beverages, tea-flavored energy drink shots; organic or herb-based energy and antioxidant aid, namely, energy shots; health and wellness drinks not for medical purposes in the nature of fruit drinks and fruit juices, tea-flavored beverages, and herbal juices; concentrates, syrups or powders used in the preparation of sports and energy drinks and fruit drinks” in Class 32. The previously attached evidence from American Heritage dictionary shows that “IMMUNE” means “of or relating to immunity or an immune response,” i.e., a response of the immune system, “the integrated body system of organs, tissues, cells, and cell products such as antibodies that differentiates self from nonself and neutralizes potentially pathogenic organisms, agents, or substances,” and that “SUPPORT” means “to keep from weakening or failing.” The attached evidence from amazon.com, beveragesdirect.com, eboost.com, floridacitrus.org, innit.com, kroger.com, lifeaidbevco.com, naturesway.com, numitea.com, sourcenaturals.com, traditionalmedicinals.com, vive-organic.com, zipfizz.com, and previously attached internet evidence from cvs.com, drsebiscellfood.com, esterc.com, justbeskinline.com, mercola.com, thewhistlingkettle.com, vitaminshoppe.com, yogiproducts.com, and zarbees.com shows that forms of “IMMUNE” and “SUPPORT” are commonly used in conjunction and separately with similar beverage, tea, shot, and related goods to describe their being for helping to keep the immune system from weakening or failing. Additionally, the attached evidence from bevindustry.com, eatdrinklivewell.com, eboost.com, lifeaidbevco.com, and vitaminshoppe.com shows that forms of the wording “IMMUNE SUPPORT” are commonly used in the media to describe similar products such that the relevant consumers would understand them to be descriptive. Applicant’s argument that “IMMUNE” is its proprietary version of term “IMMUNE SYSTEM” is not plausible given the widespread use of “IMMUNE SUPPORT” and various forms of “IMMUNE” in common use. Thus, applicant’s mark merely describes features or characteristics of applicant’s goods, in that they presumably help to keep from weakening or failing, i.e., SUPPORT, the IMMUNE system.

 

Contrary to applicant’s contentions, the previously attached evidence from cvs.com, esterc.com, justbeskinline.com, and vitaminshoppe.com, are indeed relevant to the instant matter. While this applicant has deleted its various nutritional and dietary supplement goods from its application, the evidence nonetheless shows that these terms are understood by the public to refer to consumables which feature immune system supporting qualities. Applicant’s deletion of its Class 5 goods does not change the meaning of the terms as applied to applicant’s remaining goods. Moreover, that applicant initially indicated it is providing all three classes of goods illustrates that the goods are related. Indeed, in its co-pending application Serial No. 88331157, applicant has demonstrated that its deleted Class 5 goods and retained Class 30 and class 32 goods can in fact all be one and the same. See attached evidence from tsdr.uspto.gov, showing that applicant provided identical specimen images for each of Classes 5, 30, and 32 to show use of the mark on goods virtually identical to the originally identified and partially deleted goods in the instant application. The descriptive meaning of “IMMUNE SUPPORT” as applied to Class 5 goods does not become less descriptive when applied to applicant’s various beverages in Classes 30 and 32.

 

Applicant’s argument that the combination of “IMMUNE” and “SUPPORT” in its mark is incongruous is likewise unpersuasive. When these individual words are combined into one term, i.e., the applied-for mark IMMUNE SUPPORT, the meaning of the compound term is still something which helps to keep from weakening or failing, i.e., SUPPORTS, the IMMUNE system.  The individual words within the composite term retain their original meaning and no additional meaning is created by their combination. As a result, the relevant public would perceive the mark as a whole to be merely descriptive of features or characteristics of applicant’s goods, namely that they are goods which provide IMMUNE SUPPORT; goods which help to keep from weakening or failing, i.e., SUPPORT, the IMMUNE system. Generally, if the individual components of a mark retain their descriptive meaning in relation to the goods and/or 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., Apollo Med. Extrusion Techs., Inc. v. Med. Extrusion Techs., Inc., 123 USPQ2d 1844, 1851 (TTAB 2017) (holding MEDICAL EXTRUSION TECHNOLOGIES merely descriptive of medical extrusion goods produced by employing medical extrusion technologies); In re Cannon Safe, Inc., 116 USPQ2d 1348, 1351 (TTAB 2015) (holding SMART SERIES merely descriptive of metal gun safes); In re King Koil Licensing Co., 79 USPQ2d 1048, 1052 (TTAB 2006) (holding THE BREATHABLE MATTRESS merely descriptive of beds, mattresses, box springs, and pillows); In re Franklin Cnty. Historical Soc’y, 104 USPQ2d 1085, 1086 (TTAB 2012) (holding CENTER OF SCIENCE AND INDUSTRY merely descriptive of operating a museum and conducting workshops, programs, and demonstrations in the field of science); In re Phoseon Tech., Inc., 103 USPQ2d 1822, 1823 (TTAB 2012) (holding SEMICONDUCTOR LIGHT MATRIX merely descriptive of light and UV curing systems composed primarily of light-emitting diodes (LEDs) for industrial and commercial applications); In re Putman Publ’g Co., 39 USPQ2d 2021, 2021-22 (TTAB 1996) (holding FOOD & BEVERAGE ON-LINE merely descriptive of news and information service for the food processing industry); In re Copytele, Inc., 31 USPQ2d 1540, 1541-42 (TTAB 1994) (holding SCREEN FAX PHONE merely descriptive of facsimile terminals employing electrophoretic displays).

 

Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise non-descriptive meaning in relation to the goods and/or services is the combined mark registrable.  See In re Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968); In re Positec Grp. Ltd., 108 USPQ2d 1161, 1162-63 (TTAB 2013). Applicant’s arguments regarding the purported incongruity in “IMMUNE SUPPORT” are not persuasive. In this case, both the individual components and the composite result are descriptive of applicant’s goods and do not create a unique, incongruous, or non-descriptive meaning in relation to the goods.  Specifically, the meaning of “IMMUNE SUPPORT” as a combined term is still something which gives aid or strengthens, i.e., SUPPORTS, the IMMUNE system and IMMUNE function and response. The totality of the attached and previously attached evidence demonstrates that the industry, consumers, and the general public are considerably familiar with this meaning of the combined terms.

 

Applicant argues that the examining attorney’s previously attached evidence from drsebiscellfood.com, esterc.com, justbeskinline.com, thewhistlingkettle.com, and yogiproducts.com does not show that the applied-for wording is descriptive or generic. Applicant asserts that the wording in said evidence is being used in a trademark sense. Applicant has not substantiated on what basis it believes the wording to be used as a trademark by said third parties. Nonetheless, this argument is not compelling, as the attached and previously evidence demonstrates that this term that is widely used in the marketplace to merely convey information about applicant’s or similar goods.  See In re Boston Beer Co., 198 F.3d 1370, 1372-74, 53 USPQ2d 1056, 1058-59 (Fed. Cir. 1999) (holding THE BEST BEER IN AMERICA for beer and ale a common claim of superiority and incapable of registration); In re Melville Corp., 228 USPQ 970, 971 (TTAB 1986) (holding BRAND NAMES FOR LESS for retail clothing store services a common promotional phrase and incapable of registration); TMEP §1202.04(a).  For instance, in the previously attached evidence from drsebiscellfood.com, “IMMUNE SUPPORT” is no more being used in a trademark sense than “HERBAL TEA”; the significant source-indicating matter appears to be “DR. SEBI’S”. As used on thewhistlingkettle.com, “IMMUNE SUPPORT” is displayed in a plain font no different from the remainder of the text on the page, and appears to be a general heading referring to types of goods. That terms may be displayed prominently on goods or their supporting materials does not in itself denote that said terms have trademark significance; “IMMUNE”, “SUPPORT” and “IMMUNE SUPPORT” as displayed on said evidence would be construed as merely descriptive of said goods, as they are in the instant case.

 

Applicant’s arguments regarding previous registrations are not germane to the instant case. A term that was once arbitrary or suggestive may lose its distinguishing and origin-denoting characteristics through use in a descriptive sense over a period of time, and may come to be regarded by the purchasing public as nothing more than a descriptive designation.  In re Digital Research, Inc., 4 USPQ2d 1242, 1243 (TTAB 1987); In re Int’l Spike, Inc., 190 USPQ 505, 507 (TTAB 1976). Thus, trademark rights are not static, and eligibility for registration must be determined on the basis of the facts and evidence in the record at the time registration is sought, which includes during examination and any related appeal.  In re Chippendales USA Inc., 622 F.3d 1346, 1354, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010); In re Morton-Norwich Prods., Inc., 671 F.2d 1332, 1344, 213 USPQ 9, 18 (C.C.P.A. 1982); In re Thunderbird Prods. Corp., 406 F.2d 1389, 1391, 160 USPQ 730, 732 (C.C.P.A. 1969).  Here, based on the propensity of evidence showing common use of the term, it is clear that IMMUNE SUPPORT is merely descriptive of features or characteristics of applicant’s goods.

 

Two major reasons for not protecting descriptive marks are (1) to prevent the owner of a descriptive mark from inhibiting competition in the marketplace and (2) to avoid the possibility of costly infringement suits brought by the trademark or service mark owner.  In re Abcor Dev. Corp., 588 F.2d 811, 813, 200 USPQ 215, 217 (C.C.P.A. 1978); TMEP §1209.  Businesses and competitors should be free to use descriptive language when describing their own goods and/or services to the public in advertising and marketing materials.  See In re Styleclick.com Inc., 58 USPQ2d 1523, 1527 (TTAB 2001).

 

Thus, applicant’s mark is merely descriptive of features or characteristics of applicant’s goods. Accordingly, the refusal of registration under Trademark Act Section 2(e)(1) is continued and made FINAL.

 

In addition to being merely descriptive, the applied-for mark appears to be generic in connection with the identified goods and, therefore, incapable of functioning as a source-identifier for applicant’s goods.  In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987); In re Empire Tech. Dev. LLC, 123 USPQ2d 1544 (TTAB 2017); see TMEP §§1209.01(c) et seq., 1209.02(a).  Under these circumstances, neither an amendment to proceed under Trademark Act Section 2(f) nor an amendment to the Supplemental Register can be recommended.  See TMEP §1209.01(c).

 

Applicant argues that its mark is not generic because the applied-for mark “is not understood by the purchasing public primarily as the common or class name for applicant’s goods.” While applicant’s mark as not yet been refused as generic, applicant should note that the name of an ingredient, a key aspect, a central focus or feature, or a main characteristic of goods may be generic for those goods.  See In re Cordua Rests., Inc., 823 F.3d 594, 604, 118 USPQ2d 1632, 1637-38 (Fed. Cir. 2016) (affirming the Trademark Trial and Appeal Board’s holding of CHURRASCOS (a type of grilled meat) generic for restaurant services); In re Hotels.com LP, 573 F.3d 1300, 1304, 91 USPQ2d 1532, 1535 (Fed. Cir. 2009) (affirming the Trademark Trial and Appeal Board’s holding of HOTELS.COM generic for travel agency services, namely, making reservations and bookings for temporary lodging, and providing information about temporary lodging); In re Emergency Alert Sols. Grp., LLC, 122 USPQ2d 1088, 1091-93 (TTAB 2017) (holding LOCKDOWN ALARM generic for training services focusing on the use of and response to lockdown alarms); In re Meridian Rack & Pinion, 114 USPQ2d 1462, 1465-66 (TTAB 2015) (holding BUYAUTOPARTS.COM generic for on-line retail store services featuring auto parts); TMEP §1209.03(v); see also A.J. Canfield Co. v. Honickman, 808 F.2d 291, 292, 1 USPQ2d 1364, 1365 (3d Cir. 1986) (holding CHOCOLATE FUDGE generic for diet sodas).  Thus, a term does not need to be the name of a specific product and/or service to be found generic.  Any term that the relevant public understands to refer to the genus can be generic.  Royal Crown Co. v. Coca-Cola Co., 892 F.3d 1358, 1367, 127 USPQ2d 1041, 1046 (Fed. Cir. 2018) (quoting In re Cordua Rests., Inc., 823 F.3d at 603, 118 USPQ2d at 1637 (Fed. Cir. 2016)).

 

 

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.  

 

 

How to respond.  Click to file a response to this final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB).

 

 

/Jim Hill/

James Hill

Examining Attorney

Law Office 115, USPTO

(571) 270-5682

james.hill@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 August 07, 2019 for

U.S. Trademark Application Serial No. 88318870

 

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. 

 

 

/Jim Hill/

James Hill

Examining Attorney

Law Office 115, USPTO

(571) 270-5682

james.hill@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 August 07, 2019, 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.”