Response to Office Action

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

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Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88359405 RELIEF(Standard Characters, see http://uspto.report/TM/88359405/mark.png) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

ARGUMENTS In the Office Action, the Examining Attorney initially refused registration on the basis that Applicant?s mark is merely descriptive. For the following reasons, Applicant respectfully requests that the Examining Attorney reconsider his objections and approve the mark for publication. First, the Examining Attorney has the burden of establishing a prima facie case of mere descriptiveness. In re Gyulay, 3 USPA 1009 (Fed. Cir. 1987). A mark is merely descriptive if it imparts or conveys an immediate idea as to the use, purpose or function of the goods with which it is used. See In re Reynolds Metals Co., 178 USPQ 296 (CCPA 1973). Further, not only must a mark immediately impart information about the goods, but it must do so with a ?degree of particularity.? In re Intelligent Medical Sys., Inc., 5 USPQ 2d 1674 (TTAB 1987); See also Holiday Inns, Inc. v. Monolith Enter., 212 USPQ 949 (TTAB 1981). In other words, in refusing registration on the basis of mere descriptiveness, the Examining Attorney must find more than simply some connection between the mark and the goods. The relationship must be such that the mark conveys a readily understood meaning of the goods to the average purchaser. That is, the mark must literally, and with particularity, ?describe? the goods. Applicant?s mark does not meet these requirements because it does not immediately describe the goods in question. Instead, its meaning will not be grasped without ?some measure of imagination and mental pause.? In re Shutts, 217 USPQ 363, 364-5 (TTAB 1983). The term RELIEF has no established meaning in Applicant?s industry. The Examining Attorney states that ?the term ?relief? is defined as ?removal or lightening of something oppressive, painful, or distressing.? As to the understanding that the relevant public has of the word "RELIEF," Applicant notes that the term RELIEF can also refer to: ? a means or thing that relieves pain, distress, anxiety, etc.; ? money, food, or other help given to those in poverty or need; ? something affording a pleasing change, as from monotony; ? release from a post of duty, as by the arrival of a substitute or replacement; ? the person or persons acting as replacement; ? the rescue of a besieged town, fort, etc., from an attacking force; and ? the freeing of a closed space, as a tank or boiler, from more than a desirable amount of pressure or vacuum. See the attached excerpt from dictionary.com marked as Exhibit A. Here, Applicant submits that its mark is not descriptive of its goods, since it does not convey a readily understood meaning to the average purchaser. In re Bright-Crest, Ltd., 204 USPQ 591, 594 (TTAB 1979). In this case, the mark RELIEF is suggestive. See e.g., La Maur, Inc. v. Alberto-Culver Co., 17 USPQ 607, 611 (D. Minn. 1973) (?STYLE? not merely descriptive for hair products). In La Maur, the court went on to say that the STYLE mark may be suggestive of the function of the relevant products, or the end result of those products, but the term itself was not descriptive. Id. For example, Applicant?s goods in Class 3 as essential oils and flavorings are usually directed to stimulate the senses, boost energy, etc. They are not mainly aimed at relieving symptoms or conditions. In Class 5, nutraceuticals and nutrition supplements vitamins, etc. are not used to relieve symptoms but rather to improve the nutritional content of one?s diet. Likewise, in Class 30, confectionary products such as candy and chocolates are not used to relieve symptoms but instead to satisfy a person?s desire for sweets. Further, the USPTO on numerous prior occasions has termed that marks comprising or containing the term RELIEF are registrable for similar goods. These marks include ESSENTIAL RELIEF (for body oils in Class 3), RELIEF RX and KLEEN RELIEF (both for bath products in Class 3), BRAID RELIEF, TRESS RELIEF and HEAT RELIEF (all for haircare products), SHAVER?S RELIEF, SALLY HANSEN OUCH RELIEF, RUB RELIEF and GLOVE RELIEF (all for creams and lotions in Class 3). These marks also include RELIEF (for a lubricating preparation in Class 5), RELIEF for desensitizing dental gel in Class 5), RELIEF (for human allograft tissue in Class 5), RELIEF (for medicated shampoo in Class 5), RELIEF FACTOR, PURE RELIEF, GLUCOSIMINE RELIEF, FLEX RELIEF, DRY EYE RELIEF, COMPLETE RELIEF, IF RELIEF, FOCUS RELIEF, TUMMY RELIEF, SEA RELIEF and ORGANIC RELIEF (all for supplements in Class 5), SIMPLE RELIEF, KIDS RELIEF, LIQUID RELIEF, LIVER RELIEF, GET RELIEF and FLEA RELIEF (all for medicines/ pharmaceuticals in Class 5), MAX-RELIEF, LIP RELIEF, ROLL-ON RELIEF and SIMPLE RELIEFD (all for skin preparations in Class 5), SWEET RELIEF (for eyedrops) and DANDRUFF RELIEF (for shampoos in Class 5), among others. Full details of these registrations are attached collectively as Exhibit B. Notably, although the examining attorney in some cases re quired a disclaimer of one or more terms, none of these registrations contain a disclaimer for the term RELIEF. This is because the term RELIEF is at least suggestive with respect to relevant products. The Board has consistently reversed the decisions of examining attorneys who refuse registration under Section 2(e) (1) in the absence of actual evidence linking the recognized meaning of the mark sought to be registered to the goods or services of the Applicant. See e.g., In re Intelligent Medical Systems Inc., 5 USPQ2d 1674 (TTAB 1987) (reversing examining attorney?s refusal to register ?INTELLIGENT MEDICAL SYSTEMS?). For instance, in In re Diet Tabs, 231 USPQ 587 (TTAB 1986), the Board reversed the decision of the Examining Attorney finding that the mark ?DIET TABS? was at most suggestive when used in connection with vitamin- supplement tablets. In reaching its decision, the Board noted that the mark was open to numerous interpretations as to its precise meaning and thus did not describe the goods with the degree of particularity required for refusing registration under Section 2(e)(1). As in Diet Tabs, Applicant?s RELIEF mark is open to numerous interpretations and therefore the mark is not merely descriptive. Finally, it is respectfully noted that there is often a thin line separating merely descriptive from suggestive terms and that judgments in these cases are subjective. However, where there is doubt in the matter, the doubt should be resolved in Applicant?s favor. In re Rank Organization Ltd., 222 USPQ 324, 326 (TTAB 1984) and authority cited therein.

EVIDENCE
Evidence in the nature of Dictionary.com definition and details of third-party registrations. has been attached.
Original PDF file:
evi_75323237-20191209171453517240_._Exhibit_A.pdf
Converted PDF file(s) ( 1 page)
Evidence-1
Original PDF file:
evi_75323237-20191209171453517240_._Exhibit_B.pdf
Converted PDF file(s) ( 51 pages)
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CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 005 for Essential oils, essential oils for food flavorings; Neutraceuticals for use as a dietary supplement; nutritional supplements in the form of capsules, caplets, powder, chew, gummies, and gels; gummy vitamins; Prescription and non-prescription medicines, namely, pills, tablets, capsules, caplets, liquid drops, sachets and pharmaceutical preparations for the treatment of cancers, pain disorders, psychiatric disorders, nutritional deficiencies, and diseases of the skin, ear, nose, throat, cardiovascular, respiratory, metabolic, immune, central nervous, endocrine, glandular, musculoskeletal, digestive, excretory, and reproductive systems, all of the foregoing goods being lawful under state and federal law; Candy; chocolate, chocolate confections, chocolate candies, chocolate bars, chocolate-based beverages; snack foods, namely, chocolate-based snack foods, chocolate-based meal replacement bars; gummy candies; food and beverage flavorings being non-essential oils
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Essential oils, essential oils for food flavorings; Nutraceuticals for use as a dietary supplement; Neutraceuticals for use as a dietary supplement; nutritional supplements in the form of capsules, caplets, tablets, liquid drops, sachets, powder, chews, gummies, and gels; nutritional supplements in the form of capsules, caplets, powder, chew, gummies, and gels; gummy vitamins; all of the foregoing goods being lawful under state and federal law; Prescription and non-prescription medicines, namely, pills, tablets, capsules, caplets, liquid drops, sachets and pharmaceutical preparations for the treatment of cancers, pain disorders, psychiatric disorders, nutritional deficiencies, and diseases of the skin, ear, nose, throat, cardiovascular, respiratory, metabolic, immune, central nervous, endocrine, glandular, musculoskeletal, digestive, excretory, and reproductive systems, all of the foregoing goods being lawful under state and federal law; Candy; chocolate, chocolate confections, chocolate candies, chocolate bars, chocolate-based beverages; snack foods, namely, chocolate-based snack foods, chocolate-based meal replacement bars; gummy candies; food and beverage flavorings being non-essential oilsClass 005 for Nutraceuticals for use as a dietary supplement; nutritional supplements in the form of capsules, caplets, tablets, liquid drops, sachets, powder, chews, gummies, and gels; gummy vitamins; all of the foregoing goods being lawful under state and federal law
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Applicant hereby adds the following class of goods/services to the application:
New: Class 003 for Essential oils, essential oils for food flavorings
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Applicant hereby adds the following class of goods/services to the application:
New: Class 030 for Candy; chocolate, chocolate confections, chocolate candies, chocolate bars, chocolate-based beverages; snack foods, namely, chocolate-based snack foods, chocolate-based meal replacement bars; gummy candies; food and beverage flavorings being non-essential oils
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

The applicant's current attorney information: Lisa A. Harkins. Lisa A. Harkins of FLENER IP & BUSINESS LAW, is located at

      77 W WASHINGTON STREET, SUITE 800
      CHICAGO, Illinois 60602
      US
The docket/reference number is 3T10429.

The phone number is 312-724-8874.

The fax number is 312-724-7395.

The email address is info@fleneriplaw.com

The applicants proposed attorney information: Lisa A. Harkins. Other appointed attorneys are Zareefa B. Flener, Tracy L. Zawaski. Lisa A. Harkins of FLENER IP & BUSINESS LAW, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      77 W WASHINGTON STREET, SUITE 800
      CHICAGO, Illinois 60602
      United States
The docket/reference number is 3T10429.

The phone number is 312-724-8874.

The fax number is 312-724-7395.

The email address is info@fleneriplaw.com

Lisa A. Harkins submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.
The applicant's current correspondence information: LISA A. HARKINS. LISA A. HARKINS of FLENER IP & BUSINESS LAW, is located at

      77 W WASHINGTON STREET, SUITE 800
      CHICAGO, Illinois 60602
      US
The docket/reference number is 3T10429.

The phone number is 312-724-8874.

The fax number is 312-724-7395.

The email address is info@fleneriplaw.com; fleneriplaw_docketing@cardinal-ip.com; lharkins@fleneriplaw.com; zflener@fleneriplaw.com

The applicants proposed correspondence information: Lisa A. Harkins. Lisa A. Harkins of FLENER IP & BUSINESS LAW, is located at

      77 W WASHINGTON STREET, SUITE 800
      CHICAGO, Illinois 60602
      United States
The docket/reference number is 3T10429.

The phone number is 312-724-8874.

The fax number is 312-724-7395.

The email address is info@fleneriplaw.com

FEE(S)
Fee(s) in the amount of $550 is being submitted.

SIGNATURE(S)
Declaration Signature
The filing Attorney has elected not to submit the signed declaration, believing no supporting declaration is required under the Trademark Rules of Practice.
Response Signature
Signature: /TLZ/     Date: 12/09/2019
Signatory's Name: Tracy L. Zawaski
Signatory's Position: Attorney, Flener IP & Business Law, Illinois Bar Member

Signatory's Phone Number: 312-724-8874

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    LISA A. HARKINS
   FLENER IP & BUSINESS LAW
   
   77 W WASHINGTON STREET, SUITE 800
   CHICAGO, Illinois 60602
Mailing Address:    Lisa A. Harkins
   FLENER IP & BUSINESS LAW
   77 W WASHINGTON STREET, SUITE 800
   CHICAGO, Illinois 60602
        
RAM Sale Number: 88359405
RAM Accounting Date: 12/09/2019
        
Serial Number: 88359405
Internet Transmission Date: Mon Dec 09 17:32:42 EST 2019
TEAS Stamp: USPTO/ROA-XX.X.XXX.XX-201912091732420805
21-88359405-7001292c7f3e37459884adfc74e9
5474b816da502ace0bf5a918fc7bea78948f-CC-
32406209-20191209171453517240