Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NONFINAL 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).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

 

Issue date:  December 10, 2019

 

 

 

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

 

 

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).

 

 

SUMMARY OF ISSUES:

• Section 2(e)(1) Refusal – Merely Descriptive
• Supplemental Register & Disclaimer Advisory
• Section 2(a) Advisory – Potentially Deceptive, Identification Amendments Required

 

 

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

 

Registration is refused because the applied-for mark merely describes a feature, ingredient, characteristic, purpose, or function 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.

 

Applicant’s mark is HEMP AND SHEA HYDRATION for “Non-medicated lip care preparations, non-medicated topical preparations for human use for lip and skin dryness, for moisturization, for lip irritations and for lip and skin care” in Class 3.

 

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods.  TMEP §1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)). 

 

In this case, applicant describes its goods as lip care preparations, and topical preparations for use on the lips and skin to ease dryness and provide moisture.  The term HEMP is defined as a tall widely cultivated Asian herb, cultivated for its tough fiber, edible seeds, and oil.  See http://www.merriam-webster.com/dictionary/hemp (defining “hemp”).  The term SHEA is defined as a small tropical African tree bearing oily nuts, which are used to make shea butter.  Shea butter is a common ingredient used in cosmetic skin preparations.  See http://www.lexico.com/en/definition/shea and http://www.lexico.com/en/definition/shea_butter (defining “shea” and “shea butter”).  The term HYDRATION is defined as “to supply [something] with ample fluid or moisture.”  See http://www.merriam-webster.com/dictionary/hydration (defining “hydration”).

 

Through the lens of applicants goods, applicant’s mark HEMP AND HYDRATION means lip and skin care preparations made using hemp and shea ingredients to promote moisture or fluid-retention in the lips and skin of the user.  This is confirmed by applicant’s website, which describes the lip balm goods on the packaging as containing “hemp seed oil and shea butter for an extra boost of moisture.”  See http://www.blistex.com/products/hemp-shea/ (also describing the ingredients of the goods as hemp seed oil for moisturizing, and shea butter for a “soothing result”).

 

Therefore, this wording describes an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods considering that applicant’s goods describe their function as treating lip and skin dryness and other irritations, and to moisturize the lips and skin.

 

Therefore, because applicant’s mark is merely descriptive of the services in the application, registration is refused pursuant to Section 2(e)(1) of the Trademark Act.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusal, applicant must also respond to the requirements and take note of the advisories set forth below.

 

SUPPLEMENTAL REGISTER & DISCLAIMER ADVISORY

 

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.

 

Applicant is advised that, if an acceptable allegation of use and an amendment to the Supplemental Register are filed, applicant will be required to disclaim “HEMP AND SHEA” because such wording appears to be generic in the context of applicant’s goods.  See 15 U.S.C. §1056(a); In re Wella Corp., 565 F.2d 143, 144, 196 USPQ 7, 8 (C.C.P.A. 1977); In re Creative Goldsmiths of Wash., Inc., 229 USPQ 766, 768 (TTAB 1986); TMEP §1213.03(b).

 

Applicant may submit a disclaimer in the following format:

 

No claim is made to the exclusive right to use “HEMP AND SHEA” apart from the mark as shown.

 

TMEP §1213.08(a)(i).

 

For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.

 

SECTION 2(a) ADVISORY – POTENTIALLY DECEPTIVE, IDENTIFICATION AMENDMENTS REQUIRED

 

Applicant’s mark consists of the wording “HEMP” and “SHEA”, which indicates that applicant’s goods have and/or exhibit, (or will have and/or will exhibit) the following feature or characteristic:  being made in whole or in part of hemp and shea byproducts.    

 

These features or characteristics are considered desirable for applicant’s goods.  Specifically, hemp is sought after in skin care for reducing redness and inflammation, and for being deeply moisturizing, while shea, or more specifically shea butter, is known for being moisturizing without leaving a greasy residue on the skin.  See, e.g., http://graydonskincare.com/blogs/beauty-tips/skin-benefits-of-hemp, http://www.healthline.com/health/hemp-oil-for-skin, and http://www.byrdie.com/hemp-oil-for-skin (articles extoling the health benefits of hemp oil, particularly in skin care products or routines); http://www.sheainstitute.com/asbi-library/21reasons/, http://www.healthline.com/health/beauty-skin-care/what-is-shea-butter, and http://www.walgreens.com/q/shea+butter+lip+balm (describing the positive benefits of skin care and lip care products that are made with shea).  However, if some or all of the goods do not (or will not) in fact have or exhibit this feature or characteristic, 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 or services with the named feature or characteristic will not avoid a deceptiveness refusal.  TMEP §1203.02(f)(i).

 

In addition, applicant must amend the identification “non-medicated topical preparations for human use” for being overly-broad and indefinite.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Specifically, applicant must clarify the type of topical preparations being claimed, such as clarifying that the goods are “herbal creams,” “skin sprays,” “lotions, creams, and oils,” or “herbal extracts.”

 

Therefore, applicant may amend the identification to the following, if accurate:

 

Class 3:           Non-medicated lip care preparations, non-medicated topical preparations being [specify preparations, e.g. lotions, creams and oils, lip balm, etc.] for human use for lip and skin dryness, for moisturization, for lip irritations and for lip and skin care; all of the foregoing containing shea butter, and ingredients derived solely from hemp with a delta-9 THC concentration of not more than .3% on a dry weight basis

 

RESPONSE GUIDELINES 

 

For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

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.  

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

 

/Caile Reid/

Caile Reid

Examining Attorney

Law Office 123

(571) 270-0764

caile.reid@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 December 10, 2019 for

U.S. Trademark Application Serial No. 88352515

 

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. 

 

 

/Caile Reid/

Caile Reid

Examining Attorney

Law Office 123

(571) 270-0764

caile.reid@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 December 10, 2019, 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.”