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:  July 17, 2019

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) 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
• Required Request for Information
• Required Amendment to Mark Description
• Required Clarification of Color Claim
• Required Resubmission of Drawing
• Required Amendment to Identification of Goods
• Multi-Class Application Requirement

 

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

Registration is refused because the applied-for mark merely describes the 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.

 

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods and/or services.  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)). 

 

Applicant’s mark “MICROBIOME CARE” is merely descriptive of applicant goods namely skin care preparations.

 

The term “MICROBIOME” is defined as “a community of microorganisms (such as bacteria, fungi, and viruses) that inhabit a particular environment and especially the collection of microorganisms living in or on the human body.” See attached dictionary definition of microbiome from merriam-webster.com. Additionally, the attached evidence shows that the term “MICROBIOME” is increasingly used in connection with skin care products because the microbiome plays an important role in skin health.  See attached evidence from greatest.com, mdedge.com, and dove.com noting the importance of microbiomes in relation to skin care. Additionally, the attached evidence from ahdictionary.com and lexico.com shows the wording “CARE” is commonly used in connection with similar goods to mean the provision of what is necessary to maintain health. See attached evidence from ahdictionary.com defining care as “maintenance or upkeep”; see attached evidence from Oxford Dictionary at lexico.com defining “care” as “the provision of what is necessary for the health, welfare, maintenance, and protection of something.”  Thus, the wording merely describes applicant’s goods because they are body care preparations. Also, applicant’s identification of goods includes this wording to describe its goods (e.g., lip care preparations).

 

Moreover, the descriptive terms in applicant’s mark likewise are merely descriptive of applicant’s goods when used together. Generally, if the individual components of a mark retain their descriptive meaning in relation to the goods and/or services, the combination results in a composite mark that is itself descriptive and not registrable.  In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1516 (TTAB 2016) (citing In re Tower Tech, Inc., 64 USPQ2d 1314, 1317-18 (TTAB (2002)); TMEP §1209.03(d); see, e.g., Apollo Med. Extrusion Techs., Inc. v. Med. Extrusion Techs., Inc., 123 USPQ2d 1844, 1851 (TTAB 2017) (holding MEDICAL EXTRUSION TECHNOLOGIES merely descriptive of medical extrusion goods produced by employing medical extrusion technologies); In re Cannon Safe, Inc., 116 USPQ2d 1348, 1351 (TTAB 2015) (holding SMART SERIES merely descriptive of metal gun safes); In re King Koil Licensing Co., 79 USPQ2d 1048, 1052 (TTAB 2006) (holding THE BREATHABLE MATTRESS merely descriptive of beds, mattresses, box springs, and pillows). 

 

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 goods and do not create a unique, incongruous, or nondescriptive meaning in relation to the goods.  Specifically, the mark “MICROBIOME CARE” describes the purpose of applicant’s goods namely to care for and maintain the health of the skin microbiome. See attached evidence from domino.com noting that skin care companies are “educating on microbiome care” and describing products similar to applicant’s as “microbiome-friendly.”

 

Further, the slight stylization of applicant’s mark does not obviate the fact that the wording in the applicant’s mark is merely descriptive of applicant’s goods. The applied-for mark shows the wording in stylized lettering.  Stylized descriptive or generic wording is registrable only if the stylization creates a commercial impression separate and apart from the impression made by the wording itself.  See In re Cordua Rests., Inc., 823 F.3d 594, 606, 118 USPQ2d 1632, 1639-40 (Fed. Cir. 2016); In re Northland Aluminum Prods., Inc., 777 F.2d 1556, 1561, 227 USPQ 961, 964 (Fed. Cir. 1985); TMEP §1209.03(w).  Common and ordinary lettering with minimal stylization, as in this case, is generally not sufficiently striking, unique, or distinctive as to make an impression on purchasers separate from the wording.  See In re Sadoru Grp., Ltd., 105 USPQ2d 1484, 1487 (TTAB 2012). 

 

Accordingly, applicant’s mark is refused registration under Section 2(e)(1) of the Lanham 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 set forth below.

 

REQUEST FOR INFORMATION

 

Due to the descriptive nature of the applied-for mark, applicant must provide the following information and documentation regarding the goods 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 in the application, including any materials using the terms in the applied-for mark.  Merely stating that information about the goods is available on applicant’s website is insufficient to make the information of record; 

 

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

 

(3)       Applicant must respond to the following questions: 

 

1.     Is “MICROBIOME” or “MICROBIOME CARE” a term used in applicant’s industry to refer to skin care products?

 

2.     Do applicant’s competitors use “MICROBIOME” or “MICROBIOME CARE” from mark to advertise similar goods?

 

3.     Explain whether the wording in the mark “MICROBIOME” or “MICROBIOME CARE” has any significance in the skin care or beauty or personal care trade or industry or as applied to applicant’s goods, or if such wording is a “term of art” within applicant’s industry.

 

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

 

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. 

 

REQUIRED AMENDMENT TO MARK DESCRIPTION

 

Applicant must submit an amended description of the mark because the current one is incomplete and does not describe all the significant aspects of the mark.  37 C.F.R. §2.37; see TMEP §§808.01, 808.02.  Descriptions must be accurate and identify all the literal and design elements in the mark.  See 37 C.F.R. §2.37; TMEP §§808 et seq. 

 

The following description is suggested, if accurate: 

 

The mark consists of the stylized wording “MICROBIOME in which the “O” in “MICROBIOME” forms a circle that is divided in the middle and has a half circle design starting from the top of the letter “I” to the top left of the letter “M” made up of bars or lines forming rays of sunlight on top of the “O,” stacked on top of the right aligned stylized wording “CARE”

 

REQUIRED CLARIFICATION OF COLOR CLAIM

 

Applicant must clarify whether color is a feature of the mark because the drawing shows the mark in color but the application includes a statement that color is not a feature of the mark and does not include a color claim or description referencing color.  See 37 C.F.R. §§2.52, 2.61(b). 

 

To clarify whether color is a feature of the mark, applicant may respond by satisfying one of the following:

 

(1)       If color is not a feature of the mark, applicant must submit a new drawing showing the mark only in black and white.  In this case, amending the mark to delete color would not be considered a material alteration; however, any other amendments to the drawing will not be accepted if they would materially alter the mark.  37 C.F.R. §2.72; see TMEP §§807.07(c), 807.14 et seq.  

 

(2)       If color is a feature of the mark, applicant must provide a complete list of all the colors claimed as a feature of the mark and a description of the literal and design elements that specifies where all the colors appear in those elements.  37 C.F.R. §§2.37, 2.52(b)(1); see TMEP §807.07(a)-(a)(ii).  Generic color names must be used to describe the colors in the mark, e.g., red, yellow, blue.  TMEP §807.07(a)(i)-(ii).  If black, white, and/or gray are not being claimed as a color feature of the mark, applicant must exclude them from the color claim and include in the description a statement that the colors black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark.  See TMEP §807.07(d).

 

The following color claim and description are suggested, if accurate:

 

Color claim:  “The colors blue and pink are claimed as a feature of the mark.”

 

Description:    “The mark consists of the following:  the stylized wording “MICROBIOME, with every letter except the letter “O” written in the color pink,   in which the “O” in “MICROBIOME” forms a circle that is divided in the middle, with the left half of the circle being in the color blue and the right half of the circle being in pink, and has a half circle design starting from the top of the letter “I” to the top left of the letter “M” made up of pink bars or lines on the left side and blue ones on the right that form rays of sunlight on top of the “O,” stacked on top of the right aligned pink stylized wording “CARE”.”

 

See TMEP §807.07(a)(i)-(b).

 

REQUIRED RESUBMISSION OF DRAWING

 

The drawing is not acceptable because the digitized image of the mark is unclear and does not show all aspects of the mark in sufficient detail.  See TMEP §807.04(a).  A clear drawing of the mark is an application requirement.  37 C.F.R. §2.52. 

 

Therefore, applicant must submit a new drawing showing a clear depiction of the mark.  All lines must be clean, sharp and solid, and not fine or crowded.  37 C.F.R. §§2.53(c), 2.54(e); TMEP §§807.05(c), 807.06(a).  Additionally, the USPTO will not accept a new drawing in which there are amendments or changes that would materially alter the applied-for mark.  37 C.F.R. §2.72; see TMEP §§807.13 et seq., 807.14 et seq.

 

For more information about drawings and instructions on how to submit a drawing, see the Drawing webpage.

 

REQUIRED AMENDMENT TO IDENTIFICATION OF GOODS

 

The wording “Oils, creams and lotions for the skin” in the identification of goods is indefinite and must be clarified because from the identification it is unclear whether these goods are for cosmetic purposes as required for classification of these goods in Class 3 or for medical purposes in Class 5.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

Additionally, the wording “petroleum jelly” in the identification of goods for International Class 3 must be clarified because it is too broad and could include goods in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass “petroleum jelly for cosmetic purposes” in Class 3, “petroleum jelly for industrial purposes” in Class 4, and “petroleum jelly for medical purposes” in Class 5.

 

Applicant may substitute the following wording, if accurate:

 

Class 3:           Oils, creams and lotions for the skin for cosmetic use; petroleum jelly for cosmetic purposes; non-medicated lip care preparations; petroleum jelly for use as {specify a cosmetic purpose, e.g. “for use as skin care”}

 

Class 5(NEW):          petroleum jelly for medical purposes

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See 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.

 

MULTI-CLASS APPLICATION REQUIREMENT

 

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(1)       List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)       Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule).  The application identifies goods that are classified in at least 2 classes; however, applicant submitted a fee sufficient for only 1 class.  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

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

 

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.

 

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  

 

/Melanie A. Singer/

Melanie Singer

Trademark Examiner

Law Office 112

(571) 272-5479

Melanie.Singer@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 July 17, 2019 for

U.S. Trademark Application Serial No. 88402089

 

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. 

 

 

Singer, Melanie

/Melanie A. Singer/

Melanie Singer

Trademark Examiner

Law Office 112

(571) 272-5479

Melanie.Singer@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 July 17, 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.”