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:  January 08, 2020

 

Registration was refused pursuant to Trademark Act Section 2(e)(1) because the applied-for mark merely describes a feature, characteristic, and/or ingredient of applicant’s goods. Additionally, the applicant was informed of an earlier-filed application, Application Serial No. 88061242, which posed a potential bar to registration. The cited application is actually a potential bar to the registration of the applicant’s companion application, Serial No. 88350889, and not the instant application. Finally, the applicant was required to amend its identification of goods to avoid a deceptiveness refusal, and has acceptably done so.

 

In response to the refusal to register, the applicant argues the mark is coined, incongruous and distinctive, and the examining attorney has unacceptably dissected its mark.

 

The examining attorney has reviewed the applicant’s arguments and evidence in support thereof, and is not persuaded. Accordingly, the refusal to register is maintained and made final.

 

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

Registration is refused because the applied-for mark merely describes a feature, characteristic, and/or ingredient 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 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/or 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). 

 

Applicant seeks registration of “ALL9 AMINO SPARKLING” for “Sports drinks enhanced with amino acids.”

 

The previously attached evidence from the website of Merriam-Webster Dictionary indicates the wording comprising the mark is defined as follows:

 

ALL: the whole amount, quantity, or extent of.

 

AMINO:  relating to, being, or containing an amine group —often used in combination. “Amino acid” is relevantly defined as: an amphoteric organic acid containing the amino group NH2  especially : any of the various amino acids having the amino group in the alpha position that are the chief components of proteins and are synthesized by living cells or are obtained as essential components of the diet.

 

SPARKLING: effervesce.

 

Further, the attachments from the websites of Healthline.com, MedlinePlus.gov, and NCBI (National Center for Biotechnology Information) similarly indicated: 

 

Nine amino acids—histidine, isoleucine, leucine, lysine, methionine, phenylalanine, threonine, tryptophan, and valine—are not synthesized by mammals and are therefore dietarily essential or indispensable nutrients. These are commonly called the essential amino acids.

 

Applicant argues:

 

The Office action provides insufficient evidence to establish that ALL9 AMINO SPARKLING is merely descriptive.

 

The applicant’s arguments are not persuasive.

 

In furtherance of the above, the examining attorney attaches the following Internet excerpts for nutritional products emphasizing “all 9 essential amino acids”, including the applicant’s website:

 

http://www.dymatize.com/all-9-amino/: Effectively maintaining and building lean muscle mass requires all nine essential amino acids (EAAs). Ensuring your diet has all nine EAAs can be difficult, so Dymatize® has developed ALL9 AMINO™—our most complete amino acid powder blend for optimal muscle protein synthesis (MPS) and training recovery support.

 

http://www.nowfoods.com/sports-nutrition/amino-9-essentials-powder: NOW® Sports Amino-9 Essentials™ has all 9 essential amino acids in their superior free-form state and in the proportions recommended by the National Academy of Sciences to optimize protein synthesis and tissue repair for adults age 19 and over.

 

http://www.rockhardsupplements.com.au/APN-Essential-Amino-Acids-Atheltic-Performance-Nutrition: APN Essential Amino Acids (EAAs) are a combination of all 9 essential amino acids, Leucine, Isoleucine, Valine, Histidine, Lysine, Methionine, Phenylalanine, Threonine and Tryptophan. Essential Amino Acids are considered the most important for muscle development and repair.

 

http://www.nutrabio.com/product/EAAP/: NutraBio EAA PURE is a full spectrum amino acid drink that supports the repair and rebuilding of muscle during and after intense exercise. Its all-day recovery formula is designed to be sipped throughout the day to keep you in an anabolic state. We’ve included all 9 essential amino acids (EAAs) that are required to maintain and build muscle along with coconut water and AstraGin to give EAA PURE superior hydration and absorption properties to help improve training endurance and deliver nutrients to the muscle.

 

http://www.evogennutrition.com/products/amino-kem: ALL 9 ESSENTIAL AMINO ACIDS– Essential amino acids are the key to unlocking the power of hypertrophy (muscle growth). What helps bolsters Evogen’s EAA matrix is the fact it contains adequate dosages of BCAA’s as well as all nine EAA’s including tryptophan.

 

Applicant argues:

 

… Applicant’s potential consumer is not a medical expert, but an ordinary shopper who will not have detailed medical knowledge about amino acids, even if they are familiar with the meaning of the term “amino.”

 

The applicant’s argument is not persuasive, and misconstrues the proper standard for determining mere descriptiveness. “Whether consumers could guess what the product is from consideration of the mark alone is not the test.”  In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).  The question is not whether someone presented only with the mark could guess what the goods and/or services are, but “whether someone who knows what the goods and[/or] services are will understand the mark to convey information about them.”  DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012) (quoting In re Tower Tech, Inc.,64 USPQ2d 1314, 1316-17 (TTAB 2002)); In re Mueller Sports. Med., Inc., 126 USPQ2d 1584, 1587 (TTAB 2018).

 

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 services and do not create a unique, incongruous, or nondescriptive meaning in relation to the goods.  Specifically, the applicant’s effervescent beverage product contains as an ingredient the whole or complete number of the nine essential amino acids.

 

Marks comprising more than one element must be considered as a whole and should not be dissected; however, a trademark examining attorney may consider the significance of each element separately in the course of evaluating the mark as a whole.  See DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1253, 103 USPQ2d 1753, 1756-57 (Fed. Cir. 2012) (reversing Board’s denial of cancellation for SNAP! with design for medical syringes as not merely descriptive when noting that the Board “to be sure, [could] ascertain the meaning and weight of each of the components that ma[de] up the mark”); In re Hotels.com, L.P., 573 F.3d 1300, 1301, 1304, 1306, 91 USPQ2d 1532, 1533, 1535, 1537 (Fed. Cir. 2009) (holding HOTELS.COM generic for information and reservation services featuring temporary lodging when noting that the Board did not commit error in considering “the word ‘hotels’ for genericness separate from the ‘.com’ suffix”).

 

Applicant argues:

 

The letter string ALL9 with no space (as opposed to ‘all 9’) is unique, distinctive and not in common usage.

 

The applicant’s argument is not persuasive. 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 Calphalon Corp., 122 USPQ2d 1153, 1163 (TTAB 2017) (holding “SHARPIN”, phonetic spelling of “sharpen,” merely descriptive of cutlery knife blocks with built-in sharpeners); In re Carlson, 91 USPQ2d 1198, 1203 (TTAB 2009) (holding “URBANHOUZING,” phonetic spelling of “urban” and “housing,” merely descriptive of real estate services); TMEP §1209.03(j).

 

Finally, it is noted that the applicant is the owner of U.S. Registration No. 5629755 for the mark “ALL9 AMINO” for “dietary and nutritional supplements made in whole or in significant part of protein and amino acids.” The mark was registered on the Supplemental Register a little more than one year ago. The present application has merely added the descriptive term SPARKLING to a merely descriptive mark that was registered on the Supplemental Register last year.

 

Applicant argues that any doubt regarding the mark’s descriptiveness should be resolved on applicant’s behalf.  E.g., In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 1571 4 USPQ2d 1141, 1144 (Fed. Cir. 1987); In re Grand Forest Holdings, Inc., 78 USPQ2d 1152, 1156 (TTAB 2006).  However, in the present case, the evidence of record leaves no doubt that the mark is merely descriptive.

 

Accordingly, the refusal to register is maintained and made final.

 

SUPPLEMENTAL REGISTER

Although 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.

 

Although registration on the Supplemental Register does not afford all the benefits of registration on the Principal Register, it does provide the following advantages to the registrant:

 

(1)       Use of the registration symbol ® with the registered mark in connection with the designated goods and/or services, which provides public notice of the registration and potentially deters third parties from using confusingly similar marks.

 

(2)       Inclusion of the registered mark in the USPTO’s database of registered and pending marks, which will (a) make it easier for third parties to find it in trademark search reports, (b) provide public notice of the registration, and thus (c) potentially deter third parties from using confusingly similar marks.

 

(3)       Use of the registration by a USPTO trademark examining attorney as a bar to registering confusingly similar marks in applications filed by third parties.

 

(4)       Use of the registration as a basis to bring suit for trademark infringement in federal court, which, although more costly than state court, means judges with more trademark experience, often faster adjudications, and the opportunity to seek an injunction, actual damages, and attorneys’ fees and costs.

 

(5)       Use of the registration as a filing basis for a trademark application for registration in certain foreign countries, in accordance with international treaties.

 

See 15 U.S.C. §§1052(d), 1091, 1094; J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition §§19:33, 19:37 (rev. 4th ed. Supp. 2017).

 

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 request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

 

/Ronald L. Fairbanks/

Ronald L. Fairbanks

Examining Attorney

Law Office 119

571-272-9405

ron.fairbanks@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 January 08, 2020 for

U.S. Trademark Application Serial No. 88350899

 

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. 

 

 

/Ronald L. Fairbanks/

Ronald L. Fairbanks

Examining Attorney

Law Office 119

571-272-9405

ron.fairbanks@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 January 08, 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.”