To: | Rowdy Mermaid Kombucha Inc. (steve@fourreasonslegal.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88337938 - LION'S ROOT - N/A |
Sent: | 5/23/2019 12:38:11 PM |
Sent As: | ECOM105@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88337938
MARK: LION'S ROOT
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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: Rowdy Mermaid Kombucha 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: 5/23/2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) 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(e)(1) REFUSAL - MERELY DESCRIPTIVE
Here, the wording “LION’S ROOT” refers to “Nabalus serpentaria”, which is an herb used to treat dysentery, diarrhea, constipation, and ophthalmia. See http://books.google.com/books?id=icuLwpIkH2oC&pg=PA183&lpg=PA183&dq=%22lion%27s+root%22+and+nabalus&source=bl&ots=IOMI9Bl7Lq&sig=ACfU3U2bbKNfj5yZ_2YYURio85cVYl4dvQ&hl=en&sa=X&ved=2ahUKEwjSturghLLiAhXMUt8KHQKrB4MQ6AEwAXoECAkQAQ#v=onepage&q=%22lion's%20root%22%20and%20nabalus&f=false; http://books.google.com/books?id=upI55jwytpQC&pg=PA343&lpg=PA343&dq=%22lion%27s+root%22+supplement&source=bl&ots=vLiTF2q0M1&sig=ACfU3U0yOKutat-ZxAyc-UsgJ5T_q8rOsg&hl=en&sa=X&ved=2ahUKEwip44_QgrLiAhVElVkKHZ_zBe8Q6AEwBHoECAwQAQ#v=onepage&q=%22lion's%20root%22%20supplement&f=false; see also http://plants.usda.gov/core/profile?symbol=PRSE. In addition, applicant’s website explains that applicant’s beverages feature “ingredients” such as “fresh herbs, roots, and flowers”. See http://rowdymermaid.com/pages/our-story. As a result, the wording “LION’S ROOT”, a name for a type of herb, merely describes an ingredient, feature, and/or characteristic of applicant’s goods and, therefore, registration is refused under Section 2(e)(1) of the Trademark Act.
Please also note that while an amendment to the Supplemental Register would normally be an appropriate response to this refusal, such a response is not appropriate in the present case. The instant application was filed under Trademark Act Section 1(b) and is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use meeting the requirements of 37 C.F.R. §2.76 has been timely filed. 37 C.F.R. §2.47(d); TMEP §§816.02, 1102.03.
If applicant files an acceptable allegation of use and also amends to the Supplemental Register, the application effective filing date will be the date applicant met the minimum filing requirements under 37 C.F.R. §2.76(c) for an amendment to allege use. TMEP §§816.02, 1102.03; see 37 C.F.R. §2.75(b). In addition, the undersigned trademark examining attorney will conduct a new search of the USPTO records for conflicting marks based on the later application filing date. TMEP §§206.01, 1102.03.
Amend Identification to Avoid Deceptiveness Refusal
Applicant’s mark contains the wording “LION’S ROOT”, which indicates that applicant’s goods contain or will contain lion’s root, and herb with the scientific name “Nabalus serpentaria”. See http://books.google.com/books?id=icuLwpIkH2oC&pg=PA183&lpg=PA183&dq=%22lion%27s+root%22+and+nabalus&source=bl&ots=IOMI9Bl7Lq&sig=ACfU3U2bbKNfj5yZ_2YYURio85cVYl4dvQ&hl=en&sa=X&ved=2ahUKEwjSturghLLiAhXMUt8KHQKrB4MQ6AEwAXoECAkQAQ#v=onepage&q=%22lion's%20root%22%20and%20nabalus&f=false.
This feature or characteristic is considered desirable for applicant’s goods because it can be used to treat dysentery, diarrhea, constipation, and ophthalmia. See id. However, if some or all of the goods do not (or will not) in fact have this ingredient, 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 with the named feature or characteristic will not avoid a deceptiveness refusal. TMEP §1203.02(f)(i).
Therefore, applicant may amend the identification to the following, if accurate:
Class 30: Beverages made of tea; Beverages with a tea base; Tea; Tea- based beverages; Tea-based beverages also containing spices; Kombucha tea; all of the foregoing containing Lion’s Root
Stylized text indicates changes.
Information About Goods Required
(1) A written statement explaining whether the goods contain or will contain Lion’s Root or “Nabalus serpentaria”.
(2) A sample of advertisements or promotional materials featuring the goods and/or a photograph of the identified goods, or if such materials are not available, applicant must submit samples of advertisements or promotional materials and a photograph of similar goods.
(3) A written statement describing in detail the nature, purpose, and channels of trade of the goods.
See 37 C.F.R. §2.61(b); TMEP §§814, 1402.01(e).
Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814. Merely stating that information about the goods or services is available on applicant’s website is an insufficient response and will not make the relevant website information of record. See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).
Applicant is advised that, if applicant’s response to the request for information indicates that the goods identified in the application do not or will not contain lion’s root, registration may be refused on the ground that the applied-for mark is deceptive. Trademark Act Section 2(a), 15 U.S.C. §1052(a); see In re Budge Mfg. Co., 857 F.2d 773, 775-77, 8 USPQ2d 1259, 1260-62 (Fed. Cir. 1988); In re ALP of S. Beach Inc., 79 USPQ2d 1009, 1010 (TTAB 2006); TMEP §1203.02-.02(e). Registration may also be refused, in the alternative, on the ground that the applied-for mark is deceptively misdescriptive. 15 U.S.C. §1052(e)(1); see In re Berman Bros. Harlem Furniture Inc., 26 USPQ2d 1514, 1515-16 (TTAB 1993); TMEP §§1203.02(e), 1209.04.
RESPONSE GUIDELINES
To expedite prosecution of the application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/trademarks/teas/index.jsp. If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/trademarks/teas/e_filing_tips.jsp and e-mail technical questions to TEAS@uspto.gov.
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.
/Matthew Tully/
Matthew Tully
Trademark Examining Attorney
Law Office 105
(571) 270-5943
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.