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: 5/20/2019

 

 

The referenced application has 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.

 

SUMMARY OF ISSUES:

• Section 2(d) Refusal – Likelihood of Confusion
• Sections 1, 2, and 45 Refusal – Failure to Function as a Trademark
• Section 2(e)(1) Refusal – Merely Descriptive

 

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in the table below.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration information in Attachment A.

 

Applicant’s mark is HEALTHY HEART (in standard character form) for “Cholesterol reducers; Dietary supplements for controlling cholesterol” in International Class 5.

 

The registered marks are:

 

Mark	Registration No.	Goods at issue in Class 5
DRINK SMART FOR A HEALTHY HEART   (in standard character form)	4269444	Dietary supplement beverage for promoting a healthy heart
SAINT ANTHONY'S HEALTHY HEART DRINK   (in standard character form)	4470803	Nutritional supplements; Nutritional supplements in the form of a vinagar based health drink
HEALTHY HEART CARDIOVASCULAR SUPPLEMENT   (in standard character form)	4872213	Supplements for the heart and cardiovascular system
SYTRINOL HEALTHY HEART   (in special form)	5354611	Dietary and nutritional supplements consisting of polymethoxylated flavones and tocotrienols specifically formulated for the treatment, reduction, and prevention of cardiovascular diseases; dietetic functional foods and beverages, namely, edible dietetic products in conventional food and beverage form consisting of polymethoxylated flavones and tocotrienols specifically formulated for the treatment, reduction, and prevention of cardiovascular diseases

 

 

Standard for Likelihood of Confusion

 

Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties.  See 15 U.S.C. §1052(d).  Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  Only those factors that are “relevant and of record” need be considered.  M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018). 

 

Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis:  (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services.  See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.

 

Similarity of the Marks

 

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v).  “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.”  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).

 

When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.”  Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b).  The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks.  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b).

 

In this case, the marks create substantially similar commercial impressions because they are comprised of the identical wording HEALTHY HEART.

 

Specifically, the marks are similar in appearance in that they include the identical wording “HEALTHY HEART”.  Here, the entirety of the applicant’s mark is incorporated within the registered marks and does not contain any additional matter to differentiate applicant’s mark from that of the registrants.  Incorporating the entirety of one mark within another does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d).  See Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL LANCER and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii).  In the present case, the marks are identical in part.

 

The likelihood of confusion is not obviated even though the registered marks are comprised of additional wording that is not shared in common.  Where the goods and/or services of an applicant and registrant are “similar in kind and/or closely related,” the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as in the case of diverse goods and/or services.  In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b).  Here, despite the additional wording in the marks, the matter shared in common, “HEALTHY HEART”, has the same connotation in relation to the goods at issue, namely, dietary and nutritional supplements that promote a healthy heart.

 

Lastly, the likelihood of confusion is not negated even though the mark in registration No. 5354611is in special form featuring stylized font and a heart design.  Here, applicant’s mark is in standard character form and has the potential to be stylized in a similar manner.  A mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition.  See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii).  Thus, a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the word portion could be presented in the same manner of display.  See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).  Further, the heart design in registrant’s mark reinforces the connotation of the wording “heart”.

 

In sum, the marks are identical as to “HEALTHY HEART”.  Thus, the marks are confusingly similar.

 

Relatedness of the Goods

 

In a likelihood of confusion determination, the goods and/or services are compared to determine whether they are similar, commercially related, or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).

 

Determining likelihood of confusion is based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).  

 

In this case, registration No. 4470803 uses broad wording to describe “nutritional supplements”, which presumably encompasses all goods of the type described, including applicant’s more narrow “cholesterol reducers” and “dietary supplements for controlling cholesterol”.  See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015).  Specifically, the attached evidence from NOW shows the wording dietary supplements and nutritional supplements are used interchangeably.  See attached evidence in Attachment B.  Moreover, registration No. 4872213 uses broad wording to describe “supplements for the heart and cardiovascular system”, which presumably encompasses applicant’s more narrow goods.  For example, the attached evidence shows that supplements for the heart and cardiovascular system can encompass applicant’s goods since cholesterol affects the heart and cardiovascular system.  See evidence from WebMD in Attachment B. 

 

Further, the application uses broad wording to describe “cholesterol reducers” and “dietary supplements for controlling cholesterol”, which presumably encompasses all goods of the type described, including registrant’s more narrow “dietary and nutritional supplements consisting of polymethoxylated flavones and tocotrienols specifically formulated for the treatment, reduction, and prevention of cardiovascular diseases” in registration No. 5354611, and registrant’s more narrow “dietary supplement beverage for promoting a healthy heart” in registration No. 4269444.  Here, the wording in the registrations are a narrower type of product which can be encompassed by cholesterol controlling supplements since they are generally products for treating cardiovascular disease and promoting a healthy heart.  See evidence from Vitamin Shoppe in Attachment C showing cholesterol controlling supplements are sold generally for “cardiovascular support”.  Thus, applicant’s and registrants’ goods are legally identical.  See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).

 

Additionally, the goods of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.”  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).  Thus, applicant’s and registrants’ goods are related.

 

In addition, the goods in the registrations and application are related because they are similar types of goods and likely to be found in the same channels of trade.  The compared goods and/or services need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

In the present case, the attached Internet evidence, consisting of screenshots from Vitamin Shoppe and GNC, establishes that the relevant goods are sold or provided through the same trade channels, and specifically in the same type of specialty stores to the same target consumers, namely, those seeking to improve their health through dietary and nutritional supplements.  For example, the Vitamin Shoppe and GNC offer a wide variety of goods generally sold for “cardiovascular support”.  See Attachments C and D.  As such, consumers seeking dietary supplements for cardiovascular support, including cholesterol reducers and supplements that promote a healthy heart, would likely encounter the goods of the registrants and applicant in the same specialty stores.  Thus, applicant’s and registrants’ goods are considered related for likelihood of confusion purposes.  See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).

 

In sum, upon encountering the similar marks of the applicant and registrants on the closely related goods concerned in this case, consumers are likely to be confused and mistakenly believe that the respective goods emanate from a common source or are connected in some way.  Based on this likelihood of source confusion, registration is refused under Section 2(d) of the Trademark Act.

 

Applicant should note the following additional ground for refusal.

 

SECTIONS 1, 2, AND 45 REFUSAL – MERELY INFORMATIONAL

 

Registration is refused because the applied-for mark is a slogan or term that does not function as a trademark to indicate the source of applicant’s goods and to identify and distinguish them from others.  Trademark Act Sections 1, 2, 3, and 45, 15 U.S.C. §§1051-1053, 1127.  In this case, the applied-for mark is a slogan or term that is commonly used by those in applicant’s particular industry 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). 

 

Slogans and terms that are merely informational in nature, such as statements or laudatory phrases about goods and/or services ordinarily used in business or in a particular trade or industry, are not registrable.  See In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229 (TTAB 2010).  Determining whether the slogan or term functions as a trademark or service mark depends on how it would be perceived by the relevant public.  In re Eagle Crest, Inc., 96 USPQ2d at 1229; In re Aerospace Optics, Inc., 78 USPQ2d at 1862; TMEP §1202.04.  “The more commonly a [slogan or term] is used, the less likely that the public will use it to identify only one source and the less likely that it will be recognized by purchasers as a trademark [or service mark].”  In re Hulting, 107 USPQ2d 1175, 1177 (TTAB 2013) (quoting In re Eagle Crest, Inc., 96 USPQ2d at 1229); TMEP §1202.04(b).

 

To begin with, “HEALTHY” is defined as “having good health; well; sound”; and “HEART” is defined as “[a] hollow muscular organ that pumps the blood through the circulatory system by rhythmic contraction and dilation.”  See dictionary evidence from Collins Dictionary and Oxford Dictionaries in Attachment E.  Here, “HEALTHY HEART” readily informs the public that applicant’s cholesterols reducers and dietary supplements for controlling cholesterol are for the purpose of maintaining one’s hollow muscular organ that pumps blood, or “heart”,
in good health, or “healthy”.

 

The attached evidence from various third-party websites shows that “HEALTHY HEART” is commonly used by those in applicant’s industry as a promotional phrase to indicate nutritional supplements that promote or support a HEALTHY HEART.  Because consumers are accustomed to seeing this slogan or term used in this manner, when it is applied to applicant’s goods, they would perceive it merely as informational matter indicating the purpose of the goods, namely, for maintaining or supporting a healthy heart.

 

The following attachments show “HEALTHY HEART” used as a promotional phrase for applicant’s or similar goods in applicant’s industry (emphasis added):

 

http://www.walmart.com/ip/Active-Q10-Supports-Healthy-Heart-Normal-Cholesterol-Level-Blood-Circulation-60-capsules/170057444

“Active-Q10, Supports Healthy Heart, Normal Cholesterol Level, & Blood Circulation (60 capsules)”

 

http://www.lifeextension.com/Vitamins-Supplements/item01910/CHOL-Support?sourcecode=PPL602W&gclid=CjwKCAjwlPTmBRBoEiwAHqpvheBZatfDzat9nF27NZX1fkJZeW6bQNblhoONUDNcmcDcB8ZhnP_ufhoCSm0QAvD_BwE

“Supports a healthy heart and cardiovascular system”.

 

http://shop.bodylogicmd.com/products/healthy-heart-support?variant=23189835393

“Healthy Heart Support is a high quality red yeast rice supplement that also includes a combination of plant sterols, vitamin K, calcium and phosphorous. For years, red yeast rice has been used to keep cholesterol levels within a healthy range and support healthy heart functions.”

 

http://www.vitadigest.com/ih-him-00111.html

“Himalaya Herbal Healthcare, HeartCare, 240 Veggie Caps HeartCare is a clinically researched herbal formula that supports cholesterol and lipid levels already within their normal range, healthy platelet function and healthy heart function.”

 

http://www.betterhealthinternational.com/american-biosciences-cholest-solve-24-7-120-tablets?utm_medium=shoppingengine&utm_source=shopzilla&szredirectid=15580295071247915308910070302008005

“Cholest Solve 24/7 is an all natural way to support and maintain a healthy heart.”

 

http://www.vitaminshoppe.com/p/wakunaga-of-america-company-kyolic-formula-106-300-capsules/wa-1076

“Kyolic Aged Garlic Extract - E, Cayenne, Hawthorn - Healthy Heart Formula 106 (300 Capsules)”

 

http://www.amazon.com/Healthy-Heart-Support-Supplement-NutraPro/dp/B07CT1KCY8

“Healthy Heart - Heart Health Supplements. Artery Cleanse & Protect. Support Arteries From Plaque Damage. Cholesterol And Triglyceirde Lowering. GMP Certified”

 

http://www.vitaminshoppe.com/p/nature-way-hawthorn-standardized-90-capsules/nw-2337

“Hawthorn Extract (Standardized) - Healthy Heart Function (90 Capsules)”

 

http://www.vitaminshoppe.com/p/host-defense-organic-mushrooms-reishi-120-vegetarian-capsules/1f-1046

“Reishi - Supports a Healthy Heart with Organic Mushrooms (120 Vegetarian Capsules)”

 

See Attachment F.  Thus, this slogan or term would not be perceived as a mark that identifies the source of applicant’s goods.

 

An applicant may not overcome this refusal by amending the application to seek registration on the Supplemental Register or asserting a claim of acquired distinctiveness under Section 2(f).  TMEP §1202.04(d); see In re Eagle Crest, Inc., 96 USPQ2d at 1229.  Nor will submitting a substitute specimen overcome this refusal.  See TMEP §1202.04(d). 

 

Applicant should note the following additional ground for refusal.

 

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

 

Registration is refused because the applied-for mark merely describes the purpose of applicant’s goods.  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)). 

 

Determining the descriptiveness of a mark is done in relation to an applicant’s goods and/or services, the context in which the mark is being used, and the possible significance the mark would have to the average purchaser because of the manner of its use or intended use.  See In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (citing In re Bayer Aktiengesellschaft, 488 F.3d 960, 963-64, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)); TMEP §1209.01(b).  Descriptiveness of a mark is not considered in the abstract.  In re Bayer Aktiengesellschaft, 488 F.3d at 963-64, 82 USPQ2d at 1831.

 

In the present case, applicant applied to register the mark “HEALTHY HEART” for use in connection with “Cholesterol reducers; Dietary supplements for controlling cholesterol” in International Class 5.

 

As noted above, “HEALTHY” is defined as “having good health; well; sound”; and “HEART” is defined as “[a] hollow muscular organ that pumps the blood through the circulatory system by rhythmic contraction and dilation.”  See attached dictionary evidence from Collins Dictionary and Oxford Dictionaries in Attachment E.  Taken together, “HEALTHY HEART” immediately informs consumers about a purpose of applicant’s goods, namely that applicant’s cholesterol reducers and dietary supplements for controlling cholesterol are for the purpose of maintaining or supporting one’s hollow muscular organ that pumps blood, or “heart”, in good health, or “healthy”.

 

In addition, the attached screenshots from applicant’s website shows the descriptive nature of this wording where it is used on applicant’s website to indicate the purpose of the products.  For example, applicant’s website states “Heart Healthy was created to support healthy heart functions such as maintaining healthy cholesterol levels and improving the circulation of the cardiovascular system” and “Indications [-] Taken to promote a healthy heart while in addition to a good diet and exercise helps to lower cholesterol.”  See attached website screenshots in Attachment G (emphasis added).  Lastly, the website evidence discussed in the section above shows that “HEALTHY HEART” is commonly used by others in the dietary supplement industry in connection with goods similar to those in the application to describe the purpose or function of the goods. 

 

Therefore, the evidence of record establishes that when consumers encounter applicant’s goods using the mark “HEALTHY HEART” they will immediately understand the mark as an indication of a purpose or function of applicant’s goods, namely, cholesterol reducers and dietary supplements for controlling cholesterol for the purpose of supporting or maintaining a healthy heart.  Therefore, the mark is merely descriptive of applicant’s goods, and registration is refused pursuant to Section 2(e)(1) of the Trademark Act.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusals by submitting evidence and arguments in support of registration. 

 

LEGAL ASSISTANCE ADVISORY

 

Because of the legal technicalities and strict deadlines involved in the USPTO application process, applicant may wish to hire a private attorney specializing in trademark matters to represent applicant in this process and provide legal advice.  Although the undersigned trademark examining attorney is permitted to help an applicant understand the contents of an Office action as well as the application process in general, no USPTO attorney or staff is permitted to give an applicant legal advice or statements about an applicant’s legal rights.  TMEP §§705.02, 709.06. 

 

For attorney referral information, applicant may consult the American Bar Association’s Consumers’ Guide to Legal Help; an online directory of legal professionals, such as FindLaw®; or a local telephone directory.  The USPTO, however, may not assist an applicant in the selection of a private attorney.  37 C.F.R. §2.11.

 

RESPONDING TO THIS OFFICE ACTION

 

Response guidelines:  For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

ADVISORY – TEAS PLUS AND TEAS RF REQUIREMENTS

 

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.  

 

 

 

/Luz Adorno/

Trademark Examining Attorney, Law Office 111

United States Patent and Trademark Office

(571) 272-4902

Luz.Adorno@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 5/20/2019 FOR U.S. APPLICATION SERIAL NO. 88326318

 

Your trademark application has been reviewed.  The trademark examining attorney assigned by the USPTO to your application has written an official letter to which you must respond.  Please follow these steps:

 

(1)  Read the LETTER by clicking on this link or going to http://tsdr.gov.uspto.report/, entering your U.S. application serial number, and clicking 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)  Respond within 6 months (or sooner if specified in the Office action), calculated from 5/20/2019, using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  A response transmitted through TEAS must be received before midnight Eastern Time of the last day of the response period.

 

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. 

 

(3)  Questions about the contents of the Office action itself should be directed to the trademark examining attorney who reviewed your application, identified below. 

 

/Luz Adorno/

Trademark Examining Attorney, Law Office 111

United States Patent and Trademark Office

(571) 272-4902

Luz.Adorno@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.