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:  May 15, 2020

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on April 23, 2020.

 

In a previous Office action dated October 25, 2019, the trademark examining attorney required applicant to submit a disclaimer of the words “PURE CANE” and to amend the identification of goods to clarify that the products were primarily derived from cane sugar.  Based on applicant’s response, the trademark examining attorney notes that the identification amendment requirement has been satisfied.  See TMEP §§713.02, 714.04. 

 

However applicant’s arguments and evidence against the disclaimer requirement are unpersuasive.  Therefore  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:

 

• Disclaimer Required

 

DISCLAIMER REQUIRED

 

Applicant must disclaim the wording “PURE CANE” because it merely describes applicant’s goods, and thus is an unregistrable component of the mark. See 15 U.S.C. §§1052(e)(1), 1056(a); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); TMEP §§1213, 1213.03(a). A “disclaimer” is a statement in the application record that an applicant does not claim exclusive rights to an unregistrable component of the mark.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965); TMEP §1213.  A disclaimer does not physically remove the disclaimed matter from the mark or otherwise affect the appearance of the mark.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d at 979, 144 USPQ2d at 433; TMEP §1213.

 

The evidence in the record shows, the word “PURE” is defined as “unmixed with any other matter” while “CANE” identifies the sugar cane plant.  In combination the words “PURE” and “CANE”, when used in association with sweeteners, identify sweetener products that use only sugar cane derived matter as the sweetening agent.  Please see the previously attached evidence from Monin, Dixie Crystals, Sugarcane Island, and Domino Sugar for examples of third parties using “pure cane” as a generic identifier for the composition of their sweeteners which feature only sugar cane derived sweeteners.

 

This conclusion is supported by the additional evidence from Torani, Domino Foods, Poirier, Steen’s, Routin 1883, Zulka, C&H and Etsy showing additional third parties using the words “PURE CANE” in combination to identify sweetener products such as syrups which feature cane as the only sweetener.

 

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., In re Tower Tech, Inc., 64 USPQ2d 1314, 1317-18 (TTAB 2002) (holding SMARTTOWER merely descriptive of “commercial and industrial cooling towers and accessories therefor, sold as a unit”); In re Sun Microsystems, Inc., 59 USPQ2d 1084, 1087 (TTAB 2001) (holding AGENTBEANS merely descriptive of “computer software for use in the development and deployment of application programs on a global computer network”); In re Putnam Publ’g Co., 39 USPQ2d 2021, 2022 (TTAB 1996) (holding FOOD & BEVERAGE ON-LINE merely descriptive of “a news and information service updated daily for the food processing industry, contained in a database”); In re Copytele, Inc., 31 USPQ2d 1540, 1542 (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 nondescriptive 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).

 

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 nondescriptive meaning in relation to the goods.  Therefore the applied-for mark is merely descriptive and must be refused registration under Trademark Act Section 2(e)(1). 

 

Applicant argues in reliance on DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd that the examining attorney has inadmissibly divided the applied-for mark.  This argument is unpersuasive.  In the case relied on by applicant the exclamation mark only had a non-descriptive meaning, here the words “PURE” and “CANE” are both descriptive.  Applicant does not point to a distinct meaning or double entendre created by the combination of words.  Therefore they are still descriptive.

 

Applicant argues that the word “PURECANE” does not appear in a dictionary as a combined word.  This argument is unpersuasive.  The mere compression of the two descriptive words “PURE” and “CANE” does not create a new non-descriptive impression.

 

Applicant argues that the word “PURE” has other meanings.  This argument is unpersuasive as the other meanings argued by applicant still communicate the same meaning, that the goods are derived from cane without any contaminating or additional substance.  Any other interpretation by consumers is unlikely given the frequently third parties use the words “pure” and “cane” in conjunction with sweeteners descriptively.

 

Applicant should submit a disclaimer in the following standardized format:

 

No claim is made to the exclusive right to use “PURE CANE” apart from the mark as shown.

 

If applicant does not provide the required disclaimer, the USPTO may refuse to register the entire mark. See In re Stereotaxis Inc., 429 F.3d 1039, 1040-41, 77 USPQ2d 1087, 1088-89 (Fed. Cir. 2005); TMEP §1213.01(b).  For an overview of disclaimers and instructions on how to satisfy this disclaimer requirement online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/disclaimer.jsp.

 

RESPONSE GUIDELINES

 

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). 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.   

 

 

 

.

 

 

/David A. Brookshire/

Examining Attorney

Law Office 114

(571) 272-7991

David.Brookshire@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 May 15, 2020 for

U.S. Trademark Application Serial No. 88326666

 

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. 

 

 

/David A. Brookshire/

Examining Attorney

Law Office 114

(571) 272-7991

David.Brookshire@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 May 15, 2020, 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.”