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: 5/6/2019

 

The referenced application has been reviewed by the assigned trademark examining attorney. 

 

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).

 

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(e)(1) REFUSAL - MERELY DESCRIPTIVE

·       AMENDED IDENTIFICATION AND/OR CLASSIFICATION OF GOODS AND SERVICES REQUIRED

·       MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

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

 

Registration is refused because the applied-for mark merely describes a feature of applicant’s goods and 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 immediately conveys information concerning a feature, quality, or characteristic of [an applicant’s] goods or services.”  In re N.C. Lottery, 866 F.3d 1363, 1367, 123 USPQ2d 1707, 1709 (Fed. Cir. 2017) (citing In re Bayer Aktiengesellschaft, 488 F.3d 960, 963, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)); TMEP §1209.01(b); see DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (quoting In re Abcor Dev. Corp., 588 F.2d 811, 814, 200 USPQ 215, 218 (C.C.P.A. 1978)). 

 

The determination of whether a mark is merely descriptive is made in relation to an applicant’s goods and 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 this case, the proposed mark WHAT2EAT is intended to be used with various goods and services featuring information about recipes, cooking, food, wine, beverages, and nutrition.  For example, goods covered by the application include “software … featuring recipes and information in the fields of food, cooking, wine, beverages, entertaining, allergies, and nutrition [and] software … featuring recipes organized by dish, ingredients or prep time” and  services include “database of information in the fields of recipes, food and beverage; a website featuring a search engine for recipes; [and] databases and websites where users can post ratings, reviews, and recommendations featuring recipes, foods, cooking, wine, beverages, food allergies and nutrition tips and information in cooking, and food and wine.”

 

The wording “WHAT2EAT” essentially conveys the phrase “WHAT TO EAT.”  A novel spelling or an intentional misspelling that is the phonetic equivalent of a merely descriptive word or term is also merely descriptive if purchasers would perceive the different spelling as the equivalent of the descriptive word or term.  See In re Quik-Print Copy Shop, Inc., 616 F.2d 523, 526 & n.9, 205 USPQ 505, 507 & n.9 (C.C.P.A. 1980) (holding “QUIK-PRINT,” phonetic spelling of “quick-print,” merely descriptive of printing and photocopying services); In re ING Direct Bancorp, 100 USPQ2d 1681, 1690 (TTAB 2011) (holding PERSON2PERSON PAYMENT generic for direct electronic funds transfers including electronic payment services between individuals); TMEP §1209.03(j).

 

The phrase “WHAT TO EAT” is commonly used in the field in connection with information about foods, recipes and nutritional advice. See attached evidence from http://www.lifehack.org/588510/struggling-with-what-eat-tonight-here-are-20-quick-and-healthy-dinner-recipes-for-you-choose, http://blog.grubhub.com/what-to-eat, http://cspinet.org/eating-healthy/what-eat, http://www.cleanprogram.com/pages/what-to-eat, and http://www.cdc.gov/diabetes/managing/eat-well/what-to-eat.html.  This evidence shows that the wording “WHAT TO EAT” and its phonetic equivalent “WHAT2EAT”  will be perceived by consumers as merely describing a feature of applicant’s goods and services which all appear to relate to providing recommendations on what to eat.

 

The applied-for mark is therefore refused registration on the Principal Register.  Applicant may respond to the refusal by submitting evidence and arguments in support of registration.

 

Applicant must also address the following requirement.

 

AMENDED IDENTIFICATION AND/OR CLASSIFICATION OF GOODS AND SERVICES REQUIRED

 

Some of the entries in the identification for software in International Class 9 are indefinite and too broad and must be clarified because the wording does not make clear the nature of the software and could identify goods and/or services in three international classes – as a product in International Class 9 or a service in International Class 42.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a). 

 

Computer software is a product classified in International Class 9 if it is (1) recorded on media (such as CDs) or (2) downloadable and thus can be transferred or copied from a remote computer system for use on a long-term basis.  TMEP §1402.03(d).  However, on-line non-downloadable software is considered a computer service in International Class 42.  See TMEP §§1402.03(d), 1402.11(a)(xii).

 

Further in Class 9, the wording “Downloadable mobile applications for allowing users to create, share and comment about recipes, food and beverage” is indefinite because it is not clear how the software enables users to create food or beverage. Applicant must clarify that the software concerns food and beverage recipes, if that is the case.

 

In Class 35, applicant must clarify the nature of the “accessories” is sells in its retail stores. See TMEP §§1301.01(a)(ii), 1402.11. 

 

In Class 42, the wording “Computer software development in the field of mobile applications” is indefinite, as it does not sufficiently specify the field of use or subject matter.  See TMEP §1402.03(d).  Also in Class 42, the wording “Computer services, namely providing on-line interactive databases in the fields of cooking, food, wine, beverages, baking, entertaining, recipes, diet, kitchenware, cooking equipment and accessories” is indefinite, overbroad, and indeed, largely misclassified, as the service of providing a data base is classified in the service class of the underlying subject matter. See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.  For example, databases in the field of cooking is a Class 43 service.  Databases in the field of entertainment are generally in Class 41.

 

In Class 43, the wording “Providing online databases and websites where users can post ratings, reviews, and recommendations featuring recipes, foods, cooking, wine, beverages, food allergies and nutrition tips” indefinite and overbroad. In particular, a website that features a technology that allows used to post content is a Class 42 technology service. Applicant must clarify whether it provides an informational service in Class 43 or a technology service in Class 42.  Further, the purpose of the ratings, reviews and recommendations matters, as such services done for consumer information purposes are properly classified in Class 35. Also, the wording “where users can post ratings, reviews, and recommendations featuring … food allergies and nutrition tips” is ambiguous as it is unclear how one can post ratings, reviews and recommendations regarding food allergies, for example.  Further, databases and websites featuring information are classified based on underlying content.  Nutrition counseling and advice relating to allergies are health services in Class 44. Therefore, databases featuring information about food allergies or nutrition tips, for example, would be properly classified in Class 44.

 

Class 9: Downloadable mobile applications for allowing users to create, share and comment about food and beverage recipes, food and beverage; Downloadable mobile applications for providing information, text, audio and video content in the fields of recipes, food and beverage; {Clarify if downloadable or recorded} computer application software for mobile phones and handheld computers, namely, software for guiding users, step-by-step, through recipes based on inventory; {Clarify if downloadable or recorded} computer software application for mobile phones featuring recipes and information in the fields of food, cooking, wine, beverages, entertaining, allergies, and nutrition; {Clarify if downloadable or recorded} computer application software for mobile devices featuring recipes organized by dish, ingredients or prep time

 

Class 35: Online retail store services featuring foods, spices, cooking equipment, culinary publications, and {specify field or nature of the accessories, e.g., cooking, baking, etc.} accessories; Advertising services; Providing on-line interactive databases featuring information about food, wine, beverages, and kitchenware products and cooking equipment and accessories for advertising and sales purposes

 

Class 41: Providing on-line interactive databases featuring information in the field of home entertaining

 

Class 42: Computer software development in the field of mobile applications in the field of {indicate field or subject matter, e.g., recipe sharing, etc.} for others; Software development and product development in the field of recipes, food and beverage; Creating an on-line community for registered users to participate in discussions, share feedback, form virtual communities, and engage in social networking; Providing a web site featuring technology that enables users to access a computer database of information in the fields of recipes, food and beverage; Providing a website featuring a search engine for recipes; Providing a website featuring resources, namely, a website featuring primarily software for recipe sharing and management, nutrition and meal planning and also featuring non-downloadable publications in the nature of recipes in the field of cooking; Providing a website featuring technology that enables users to manage and share their cooking recipes; Computer services, namely, creating an online community for registered users to participate in discussions, share feedback, form virtual communities, and engage in social networking; Computer services, namely providing on-line interactive databases in the fields of cooking, food, wine, beverages, baking, entertaining, recipes, diet, kitchenware, cooking equipment and accessories; Providing a website featuring non-downloadable software that enables users to post ratings, reviews, and recommendations in the field of recipes, foods, cooking, wine, beverages, food allergies and nutrition tips and information in cooking, food, and wine

 

Class 43: Providing online databases and websites featuring where users can post ratings, reviews, and recommendations for featuring recipes, foods, cooking, wine, and beverages, and food allergies and nutrition tips and information about cooking, and food, and wine, posted by users for culinary appreciation purposes; Providing on-line interactive databases in the fields of cooking, baking, food and beverage recipes, and wine characteristics

 

Class 44: Providing online databases and websites featuring where users can post ratings, reviews, and recommendations posted by users in the field of food allergies and nutrition tips; Providing on-line interactive databases featuring information in the field of diet and nutritional information about food and beverages

 

The applicant should also note the following when amending the identifications:

 

• Applicant’s goods and services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably narrowed.  See 37 C.F.R. §2.71(a); TMEP §§1402.06, 1904.02(c)(iv).  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and services or add goods and services not found or encompassed by those in the original application or as acceptably narrowed.  See TMEP §1402.06(a)-(b). 

 

• Moreover, the scope of the goods and services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and services will further limit scope, and once goods and services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e). 

 

• For guidance on writing identifications of goods and services and classifying them properly, please use the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html, which is continually updated in accordance with prevailing rules and policies.  See TMEP §§70203(a)(iv), 1402.04.

 

Applicant must also note the following requirements.

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(1)       List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)       Submit a filing fee for each international class not covered by the fees already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least six (6) classes; however, applicant submitted a fee sufficient for only four (4) classes.  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

ASSISTANCE

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

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.  

 

 

 

/Valeriya Painter/

Examining Attorney

Law Office 121

(571) 270-7132

valeriya.painter@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 5/6/2019 FOR U.S. APPLICATION SERIAL NO. 88348959

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click 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)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 5/6/2019 (or sooner if specified in the Office action).  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.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

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.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@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.