UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
|
U.S. APPLICATION SERIAL NO. 88379380
MARK: SALT
|
|
|
CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
|
|
APPLICANT: LIBERTY PROCUREMENT CO. INC.
|
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
|
OFFICE ACTION
STRICT DEADLINE—TO AVOID ABANDONMENT OF THIS TRADEMARK APPLICATION, THE USPTO MUST RECEIVE A COMPLETE RESPONSE TO THIS OFFICE ACTION 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: 6/26/2019
The undersigned examining attorney has reviewed the above-referenced application, in accordance with section 2.61 of the Trademark Rules of Practice, 37 C.F.R. § 2.61 (2019), and has determined that the application cannot be advanced at this time, for the reasons detailed in this communication.
This correspondence details the following bases for refusing advancement of this application:
1. There are two potentially conflicting marks in prior-filed pending applications that may ultimately bar registration;
2. Registration is barred as to certain goods in International Class 21 as the proposed mark is merely descriptive of these goods; and
3. Applicant is required to amend the description of goods in International Class 20 to remove parenthetical information.
The USPTO’s database of registered and pending marks have been searched and no similar registered mark has been found that would bar registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d) (2012). Trademark Manual of Examining Procedure § 704.02 (October 2018). However, there are TWO potentially conflicting pending applications (attached hereto) that may present a bar to registration of the asserted mark in this application.
Information is attached concerning pending Application Serial Nos. 87727886 and 87727903 (Filing Date: December 20, 2017). The filing date of said applications precede Applicant’s filing date. There may be a likelihood of confusion between Applicant’s proposed mark and the subject marks of the cited applications. Therefore, if either of the earlier‑filed applications registers, registration may be refused under Section 2(d). 37 C.F.R. § 2.83; see 15 U.S.C. § 1052(d); TMEP § 1208. Upon receipt of Applicant’s response to this Office Action, action on this case may be suspended pending final disposition of the earlier‑filed applications.
Applicant may present arguments relevant to the issue of a potential conflict in its response to this Office Action. The election not to submit arguments at this time in no way limits Applicant’s right to address this issue at a later point if a refusal under Section 2(d) ultimately issues.
Applicant filed this application on April 10, 2019, under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b) (2012), based on its allegation of a bona fide intention to use the mark “SALT” to indicate the source of various goods, including “Bowls, Canister sets,” “Cooking utensils, namely, grills, Cookware for use in microwave ovens” and “Plates” in International Class 21.
Registration is refused, pursuant to Section 2(e)(1), as to these specific goods, because the applied-for mark merely describes the use of Applicant’s identified goods. Id. § 1052(e)(1); see TMEP §§ 1209.01(b), 1209.03(g).
Pursuant to Section 2(e)(1), a mark that immediately conveys information about an ingredient, quality, characteristic, function, feature, purpose or use of the relevant goods or services is merely descriptive and therefore refused registration on the Principal Register. 15 U.S.C. § 1052(e)(1); see In re Gyulay, 820 F.2d 1216, 3 U.S.P.Q.2d 1009 (Fed. Cir. 1987); In re Bed & Breakfast Registry, 791 F.2d 157, 229 U.S.P.Q. 818 (Fed. Cir. 1986); In re MetPath Inc., 223 U.S.P.Q. 88 (TTAB 1984); In re Bright‑Crest, Ltd., 204 U.S.P.Q. 591 (TTAB 1979).
It is settled law that the question of descriptiveness cannot be determined in the abstract, In re Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 U.S.P.Q.2d 1217, 1219 (Fed. Cir. 2012), “but in relation to the goods or services for which registration is sought, the context in which it is being used on or in connection with those goods or services, and the possible significance that the term would have,” In re Zanova, Inc., 59 U.S.P.Q.2d 1300, 1303 (TTAB 2001), “from the viewpoint of the relevant purchasing public.” In re Stereotaxis, Inc., 429 F.3d 1039, 1042, 77 U.S.P.Q.2d 1087, 1090 (Fed. Cir. 2005); see In re Abcor Dev. Corp., 588 F.2d 811, 814, 200 U.S.P.Q. 215, 218 (C.C.P.A. 1978) (“[I]mplicit in this test is the requirement that descriptiveness of a mark, when applied to the goods or services involved, is to be determined from the standpoint of the average prospective purchaser.”). “The question is not whether someone presented with only the mark could guess what the goods or services are. Rather, the question is whether someone who knows what the goods or services are will understand the mark to convey information about them.” In re Tower Tech, Inc., 64 U.S.P.Q.2d 1314, 1316–17 (TTAB 2002). In addition, “the mark need not recite each feature of the relevant goods or services in detail to be descriptive.” In re Dial-a-Mattress Operating Corp., 240 F.3d 1341, 1346, 57 U.S.P.Q.2d 1807 (Fed. Cir. 2001).
“Any competent source suffices to show the relevant purchasing public’s understanding of a contested term or phrase,” In re Nett Designs, 236 F.3d 1339, 1341, 57 U.S.P.Q.2d 1564 (Fed. Cir. 2001), “such as dictionaries, newspapers, or surveys.” In re Bed & Breakfast Registry, 791 F.2d 157, 160, 229 U.S.P.Q. 818, 819 (Fed. Cir. 1986). “Third-party usage can demonstrate the ordinary dictionary meaning of a term or the meaning of a term to those in the trade.” Specialty Brands, Inc. v. Coffee Bean Distrib., Inc., 223 U.S.P.Q. 1281, 1285 (Fed. Cir. 1984).
“The intent of Section 2(e)(1) is to protect the competitive needs of others, that is, ‘descriptive words must be left free for public use.’ ” In re Styleclick.com Inc., 57 U.S.P.Q.2d 1445, 1448 (TTAB 2000) (quoting In re Colonial Stores, Inc., 394 F.2d 549, 157 U.S.P.Q. 382, 383 (C.C.P.A. 1968)).
In the instant case, Applicant’s asserted designation “SALT,” is presented in standard characters, standing alone. The term is defined in the relevant context as “usually whitish crystalline solid, chiefly sodium chloride, used extensively in ground or granulated form as a food seasoning and preservative. Also called common salt, table salt.” Am. Heritage Dictionary of the English Language (5th ed. 2019), http://www.ahdictionary.com/ (attached hereto).
Here, the average relevant consumer for Applicant’s listed goods would be anyone in the general public who buys home goods, kitchenware and cookware.
The attached evidence demonstrates that “SALT” is marked on canisters and bowls to indicate the contained goods, and that “salt plates” name goods that can be used as plates, cooking grills, and cookware for use in microwave ovens. See attached evidence. The attached Internet evidence demonstrates the descriptive nature of the proposed mark when used in association with the specific goods to the relevant public. See attached evidence.
Since the proposed mark, when viewed in connection with Applicant’s listed goods, would immediately and forthwith convey to relevant purchasers that the identified goods are for kitchenware or cookware products for use with salt, the proposed designation is merely descriptive when considered in its entirety. For this reason, Applicant’s mark is refused registration on the Principal Register as to “Bowls, Canister sets,” “Cooking utensils, namely, grills, Cookware for use in microwave ovens” and “Plates” in International Class 21.
Although the examining attorney has refused registration due to descriptiveness, Applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
A mark in an application filed under Section 1(b) is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use, under Rule 2.76, has been filed. 37 C.F.R. §§ 2.47(d), 2.75(b), 2.76; see TMEP §§ 815.02, 1102.03. When a Section 1(b) application is successfully amended to the Supplemental Register, the effective filing date of the application is the date that the minimum filing requirements, under Rule 2.76, for filing of the allegation of use were met. 37 C.F.R. §§ 2.75(b), 2.76; see TMEP §§ 816.02, 1102.03.
The Office has corrected the original spelling of Étagère, as it is clear that it is an obvious typographical error.
With respect to the identified “plastic tubs (not bathtubs)” in International Class 20, Applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the description of the goods, if appropriate.
Generally, applicants should not use parentheses and brackets in identifications in their applications so as to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate goods and/or services that have been deleted from registrations or in an affidavit of incontestability to indicate goods and/or services not claimed. See TMEP § 1402.12. However, parenthetical information is permitted in identifications if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity or scope of the identification, e.g., “fried tofu pieces (abura-age).” Id.
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.
Applicant must respond timely and completely to the issues raised in this Office Action. 15 U.S.C. § 1062(b); 37 C.F.R. §§ 2.62, 2.65(a); TMEP §§ 711, 718.03. Otherwise, this application will be abandoned. 37 C.F.R. § 2.65(a).
Please contact the undersigned attorney with any questions.
Sincerely,
/Judy Helfman/
Judith M. Helfman
Attorney at Law
Law Office 111
571/272-5892
judy.helfman@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.
