| To: | E. & J. Gallo Winery (tm.group@ejgallo.com) |
| Subject: | U.S. Trademark Application Serial No. 88340978 - JUNIPER & OAK - N/A |
| Sent: | September 13, 2019 10:21:33 AM |
| Sent As: | ecom123@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
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U.S. Application Serial No. 88340978
Mark: JUNIPER & OAK
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Correspondence Address:
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Applicant: E. & J. Gallo Winery
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Reference/Docket No. N/A
Correspondence Email Address: |
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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: September 13, 2019
This Office action is in response to applicant’s communication filed on August 22, 2019.
In a previous Office action dated May 31, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(e)(1) for mere descriptiveness.
Based on applicant’s response, 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 – mark is merely descriptive – FINAL
As previously discussed, registration is refused because the applied-for mark merely describes features or characteristics 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.
Here, the applicant has applied for the mark JUNIPER & OAK in connection with
As previously discussed and supported by evidence, applicant’s identification of goods encompasses wine, and all liquor, including gin and bourbon/whisky. In addition, the examining attorney provided evidence that juniper is a key ingredient in gin and that oak is a characteristic of wine and bourbon/whisky production and flavor profiles.
Applicant argues that the mark is suggestive with respect to “alcoholic beverages excluding beer,” and that the combination of the two words is unitary and incongruous with respect to the goods. However, as previously demonstrated, given that juniper is a key ingredient in gin and oak is key in the production and flavor profile of wine and bourbon/whisky, the impression of the two words is not incongruous; it merely describes ingredients or characteristics of applicant’s broadly identified alcoholic beverages.
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).
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. Specifically, when viewing or hearing the applicant’s mark JUNIPER & OAK in connection with the applicant’s alcoholic beverages except beer, consumers are likely to immediately understand the mark as merely describing an ingredient or characteristic of these goods. No mental leap or imagination is required of purchasers to conclude from JUNIPER & OAK that the applicant’s goods likely include or feature juniper as an ingredient or oak as a feature in production and/or flavor profile.
Applicant also submitted third-party registrations to demonstrate that the wording JUNIPER and OAK has been treated as distinctive in relationship to goods similar to applicant’s goods. The existence of these registrations, applicant argues, demonstrates that applicant’s mark is also distinctive in the context of the identified goods. However, trademark rights are not static, and eligibility for registration must be determined on the basis of the facts and evidence of record that exist at the time registration is sought. In re Morton-Norwich Prods., Inc., 671 F.2d 1332, 213 USPQ 9 (C.C.P.A. 1982); In re Thunderbird Prods. Corp., 406 F.2d 1389, 160 USPQ 730 (C.C.P.A. 1969); In re Sun Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001); In re Styleclick.com Inc., 58 USPQ2d 1523 (TTAB 2001); In re Styleclick.com Inc., 57 USPQ2d 1445 (TTAB 2000). A number of the third-party registrations submitted by applicant are over ten years old, and do not reflect the commercial impression of the wording in the current reality of the marketplace, nor the Office’s approach to that wording as reflected on the register. The examining attorney attaches additional evidence demonstrating the current descriptive nature of OAK and JUNIPER in relation to wine, gin, and bourbon/whisky all of which are encompassed by applicant’s broadly-worded identification: http://www.thespruceeats.com/why-oak-matters-with-wine-3511305, http://vinepair.com/wine-101/wine-aged-oak-history-lesson/, http://www.themacallan.com/en-us/make-the-call/part-2-facing-the-flame-inside-the-cooperages-in-jerez-spain, http://www.gobourbon.com/using-oak-barrels-to-age-whiskey/, http://vinepair.com/articles/best-wood-whiskey/, http://theginisin.com/botanicals-list/juniper/, http://blog.distiller.com/london-dry-gins/.
The examining attorney also notes that a number of the third-party registrations are also truly unitary marks with distinctive matter that allows for their registration and for which a disclaimer would be inappropriate.
Finally, applicant is reminded that case must be decided on its own facts. As applicant noted, the USPTO is not bound by the decisions of the examiners who examined the applications for the applicant’s previously registered marks, based on different records. See In re Cordua Rests., Inc., 823 F.3d 594, 600, 118 USPQ2d 1632, 1635 (Fed. Cir. 2016) ("The PTO is required to examine all trademark applications for compliance with each and every eligibility requirement . . . even if the PTO earlier mistakenly registered a similar or identical mark suffering the same defect.") TMEP 1216.01. Although applicant has characterized this admonition as a contravention of the Office’s stated goals in the 21st Century Strategic Plan, the evidence of record, which reflects the reality of the current marketplace indicates otherwise. Applicant’s argument that consistency dictates that the proposed mark be entitled to register on the principal register is contradicted by the evidence of use in the marketplace as well as by the third-party registrations made of record by the examining attorney that demonstrate descriptive treatment of this wording with respect to the relevant goods.
For these reasons, when consumers encounter the applicant's goods under the mark JUNIPER & OAK, they are likely to immediately understand the mark as merely describing an ingredient, quality, characteristic, function, feature, purpose, or use of these goods, rather than as indicating the source of these goods. Thus, the refusal to register the proposed mark pursuant to Trademark Act Section 2(e)(1) is made final.
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)
/Jessica "Lauren" Turner/
/J Lauren Turner/
Examining Attorney
Law Office 123
(571) 272-9890
Jessica.Turner1@uspto.gov
RESPONSE GUIDANCE
