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 31, 2020

 

This letter responds to the applicant’s communication of December 18, 2019.  The multiple class application requirements have been met.  The following issues are unresolved and made final.

 

Summary of Issues Applicant Must Address

• Refusal Based on Trademark Act Section 2(e)(1) – Descriptiveness of the Mark
• Additional Information Regarding Descriptiveness
• Identification and Classification of Goods

 

Possible Additional Issue

• Multiple Class Application Requirements

 

Possible Response to Descriptiveness Refusal and to Requirement for Additional Information Regarding Descriptiveness

• Amendment to Seek Registration on the Supplemental Register with Disclaimer

 

Refusal Based on Trademark Act Section 2(e)(1) – Descriptiveness of the Mark

The applicant has applied to register the mark STIX for use on pregnancy kits for home use and ovulation kits for home use (Class 5) and with an online store and subscription-based order fulfillment service for women’s home healthcare products including pregnancy test kits for home use and ovulation kits for home use (Class 35).

 

The examining attorney has reviewed the applicant’s arguments in response to the finding of descriptiveness. 

 

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 re Digital Research Inc., 4 USPQ2d 1242, 1243-44 (TTAB 1987) (finding CONCURRENT PC-DOS and CONCURRENT DOS merely descriptive of “computer programs recorded on disk” where the relevant trade used the denomination “concurrent” as a descriptor of a particular type of operating system). 

 

“Whether consumers could guess what the product [or service] is from consideration of the mark alone is not the test.”  In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).

 

The examining attorney finds that these principles clearly support the descriptiveness refusal in this case.

 

The evidence attached to the Office action of June 25, 2019, shows that “sticks” is a descriptive term for the types of items provided by the applicant through its online store – pregnancy test sticks and ovulation test sticks.  The additional evidence attached to this final action shows that pregnancy tests and ovulation tests are described as “sticks.”  That is, in addition to the Easy@Home sticks and Clearblue sticks shown as evidence attached to the earlier Office action, such sticks are provided by CVS Health and Babyplan as well, as shown by the attached web page evidence.

 

The applicant argues in the response that because the evidence attached to the Office action of June 25, 2019, refers to the term “sticks,” the phonetic equivalent STIX is not descriptive. 

 

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). 

 

In this case, the term STIX indicates that the applicant provides sticks of some type; specifically, these sticks are pregnancy test sticks and ovulation test sticks.

 

Registered marks show the descriptiveness of the term STIX.  The applicant may wish to note the attached registrations on the Supplemental Register that include the term STIX.  These marks are registered on the Supplemental Register because the term STIX, along with any additional wording in the marks, is descriptive.  That is, the following registrations show the descriptiveness of the term STIX:

 

• The term MICRO-STIX used on dental instruments is registered on the Supplemental Register because the wording in the mark, including STIX, is descriptive (Registration No. 3607837)

 

• The mark GREEN STIX used on styptic pencils is registered on the Supplemental Register because the wording in the mark, including STIX, is descriptive (Registration No. 4705616)
  
  
• The mark SLIM STIX used on dietary and nutritional supplements is registered on the Supplemental Register because the wording in the mark, including STIX, is descriptive (Registration No. 4915776).
  
  

In cases such as these in which the term STIX indicates “sticks,” the term STIX is descriptive of the goods and services.  Likewise, the applicant’s mark STIX, which indicates test sticks, is descriptive of its goods and services.

 

Evidence of additional meanings of mark has not been provided; even if provided, additional meanings are irrelevant if one meaning is descriptive.  In response to the descriptiveness refusal, the applicant argues that the term “stix” has meanings other than “sticks.”  The applicant has not provided evidence of other meanings of this term, especially in relation to the applicant’s specific goods and services, other than links to web pages.  The applicant’s internet materials have not been properly made of record and are objected to.  Although the applicant has discussed the contents of webpages as evidence against the refusal, the applicant provided only their web addresses and/or hyperlinks, which is not sufficient to introduce the underlying webpages into the record.  In re Olin, 124 USPQ2d 1327, 1331 n.15 (TTAB 2017) (citing In re Powermat Inc., 105 USPQ2d 1789, 1791 (TTAB 2013); In re HSB Solomon Assocs., LLC, 102 USPQ2d 1269, 1274 (TTAB 2012)); TBMP §1208.03; TMEP §710.01(b). 

 

To properly introduce Internet evidence into the record, an applicant must provide (1) an image file or printout of the downloaded webpage, (2) the date the evidence was downloaded or accessed, and (3) the complete URL address of the webpage.  See In re I-Coat Co., LLC, 126 USPQ2d 1730, 1733 (TTAB 2018); TBMP §1208.03; TMEP §710.01(b).  Accordingly, the underlying webpages associated with the web addresses and/or links will not be considered.

 

Nevertheless, the question is not whether every meaning of STIX describes the applicant’s goods and services; the question is whether at least one meaning of this term describes the applicant’s goods and services.  Descriptiveness is considered in relation to the relevant goods and services.  DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012).  “That a term may have other meanings in different contexts is not controlling.”  In re Franklin Cnty. Historical Soc’y, 104 USPQ2d 1085, 1087 (TTAB 2012) (citing In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979)); TMEP §1209.03(e).  “It is well settled that so long as any one of the meanings of a term is descriptive, the term may be considered to be merely descriptive.”  In re Mueller Sports Med., Inc., 126 USPQ2d 1584, 1590 (TTAB 2018) (quoting In re Chopper Indus., 222 USPQ 258, 259 (TTAB 1984)).

 

The examining attorney finds that because the proposed mark merely describes a feature of the applicant’s goods and services, registration of the applicant’s mark is barred under Section 2(e)(1) of the Trademark Act.

 

Request for Additional Information Regarding Descriptiveness

The applicant has not responded to the requirement for additional information regarding descriptiveness. 

The applicant should note that failure to comply with a request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814. 

 

Due to the descriptive nature of the applied-for mark, the applicant must provide the following information and documentation regarding the goods and services and wording appearing in the mark: 

 

(1)       Fact sheets, instruction manuals, brochures, advertisements and pertinent screenshots of applicant’s website as it relates to the goods and services in the application, including any materials using the terms in the applied-for mark.  Merely stating that information about the goods and services is available on applicant’s website is insufficient to make the information of record.; 

 

(2)       If these materials are unavailable, the applicant should submit similar documentation for goods and services of the same type, explaining how its own product or services will differ.  If the goods and services feature new technology and information regarding competing goods and services is not available, applicant must provide a detailed factual description of the goods and services.  Factual information about the goods must make clear how they operate, salient features, and prospective customers and channels of trade.  For services, the factual information must make clear what the services are and how they are rendered, salient features, and prospective customers and channels of trade.  Conclusory statements will not satisfy this requirement.; and

 

(3)       The applicant must respond to the following questions: Do the applicant’s goods or services include test sticks or other sticks used in the field of healthcare?  Do the applicant’s competitors use the term “sticks” to advertise similar goods or services?

 

See 37 C.F.R. §2.61(b); TMEP §§814, 1402.01(e). 

 

Identification and Classification of Goods

The amended identification of goods is unacceptable because the wording “pregnancy kits” and “ovulation kits” is indefinite.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  These goods could include pregnancy test kits (Class 5), ovulation test kits (Class 5), pregnancy kits composed of non-medicated skin lotions for stretch marks (Class 3), or ovulation kits composed of folic acid supplements (Class 5), for example.  The applicant must indicate the specific types of kits or their components.  The amended identification of services is acceptable.

 

To resolve this issue, the applicant may adopt the following identification and classification, if accurate (added wording given in bold): 

 

• Women’s home healthcare products, namely, pregnancy kits composed of [indicate specific Class 3 goods, e.g., non-medicated skin lotions for stretch marks] for home use (Class 3)

 

• Women’s home healthcare products, namely, pregnancy test kits for home use and ovulation test kits for home use; ovulation kits composed of [indicate specific Class 5 goods, e.g., folic acid supplements] (Class 5)

 

• On-line store for women's home healthcare products, including pregnancy test kits for home use and ovulation kits for home use; subscription order fulfillment services in the field of women's home healthcare products, including pregnancy test kits for home use and ovulation kits for home use (Class 35)

 

The 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 amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  The applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, the applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or 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/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

Multiple Class Application Requirements

The application references goods and services based on use in commerce in more than one international class; therefore, the applicant must satisfy all the requirements below for each international class:

 

(1)       List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).

 

(2)       Submit a filing fee for each international class not covered by the fees already paid (view the USPTO’s current fee schedule).  Specifically, the application identifies goods and services based on use in commerce that are classified in at least three classes; however, applicant submitted fees sufficient for only two classes.  The applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.

 

(3)       Submit verified dates of first use of the mark anywhere and in commerce for each international class.  See more information about verified dates of use.

 

(4)       Submit a specimen for each international class.  The current specimens are acceptable for Classes 5 and 35 only.  The current specimens are not acceptable for any other class.  See more information about specimens.

 

            Examples of specimens for goods include tags, labels, instruction manuals, containers, and photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale.  Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods.

           

(5)       Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.”  See more information about verification.

 

See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).

 

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

 

Option to Change Filing Basis.  If the applicant cannot provide specimens of use as to classes other than Class 5 and Class 35, the applicant may amend the Section 1(a) filing basis (use in commerce) to Section 1(b) (intent to use basis) as to those classes, for which no specimen is required before publication. However, should the applicant amend the basis to Section 1(b), registration cannot be granted until the applicant later amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen and filing fee.  15 U.S.C. Section 1051(c); 37 C.F.R. Section 2.76, 2.88; TMEP Chapter 1100.

 

In order to amend to Section 1(b), the applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. Section 2.20: “Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application (specify particular classes) as of the filing date of the application.”  15 U.S.C. Section 1051(b); 37 C.F.R. Sections 2.34(a)(2), 2.35(b)(1); TMEP Section 806.03(c). 

 

Possible Response to Descriptiveness Refusal and to Requirement for Additional Information Regarding Descriptiveness: Amendment to Seek Registration on the Supplemental Register with Disclaimer

 

Supplemental Register.  The applied-for mark has been refused registration on the Principal Register.  The applicant may respond to the refusal by submitting evidence and arguments in support of registration and/or by amending the application to seek registration on the Supplemental Register.  See 15 U.S.C. §1091; 37 C.F.R. §§2.47, 2.75(a); TMEP §§801.02(b), 816.  Amending to the Supplemental Register does not preclude applicant from submitting evidence and arguments against the refusal.  TMEP §816.04.

 

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).

 

Disclaimer.  The applicant is advised that, if the application is amended to seek registration on the Supplemental Register, the applicant will be required to disclaim the exclusive right to use STICKS because this word 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).

 

The applicant argues that the disclaimer is not appropriate because its mark appears as STIX rather than STICKS.  However, disclaimers appear with the correct spelling of the wording.   See In re Omaha Nat’l Corp., 819 F.2d 1117, 1119, 2 USPQ2d 1859, 1861 (Fed. Cir. 1987); In re Carlson, 91 USPQ2d 1198, 1203 (TTAB 2009); TMEP §1213.08(c).  The following registrations illustrate this requirement:

 

• The mark CANKER STIX includes a disclaimer of the term “sticks” apart from the mark as shown (Registration No. 5950808)

 

• The mark FREEZY STIX includes a disclaimer of the term “sticks” apart from the mark as shown (Registration No. 3867013)

 

• The mark SERENITY STIX includes a disclaimer of the term “sticks” apart from the mark as shown (Registration No. 4258155)

 

• The mark VIVA STIX includes a disclaimer of the term “sticks” apart from the mark as shown (Registration No. 5957573)

 

In this case, the attached web page evidence from CVS Pharmacy and Babyplan, along with the attached evidence from Easy@Home and Clearblue show that the word “sticks” is a generic term for pregnancy test sticks.  This evidence is linked to the goods and services at issue in that the evidence shows that “sticks” is a generic term for the applicant’s goods and services, which are described broadly enough in the application to include test sticks; moreover, the applicant’s specimens of use show that it provides such sticks.  Thus the relevant public would understand this designation to refer primarily to the genus of goods and services.

 

The applicant may respond to this issue by submitting a disclaimer in the following format:

 

·       No claim is made to the exclusive right to use “STICKS” apart from the mark as shown.

 

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

 

Information for TEAS Applicants

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).

 

 

/Leigh Caroline Case/

Examining Attorney

Law Office 118

leigh.case@uspto.gov (preferred)

 

 

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 31, 2020 for

U.S. Trademark Application Serial No. 88377144

 

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. 

 

 

/Leigh Caroline Case/

Examining Attorney

Law Office 118

leigh.case@uspto.gov (preferred)

 

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 31, 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.”