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:  December 19, 2019

 

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on December 12, 2019.

 

In a previous Office action(s) dated July 9, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following:  Trademark Act Section 2(e)(1) for mere descriptiveness.

 

The trademark examining attorney maintains and now makes FINAL the refusal below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

• Section 2(e)(1) Refusal—Merely Descriptive
• Supplemental Register—Advisory

 

 

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

 

The refusal under Trademark Act Section 2(e)(1) is now made FINAL for the reasons set forth below.  See 15 U.S.C. §1052(e)(1); 37 C.F.R. §2.63(b).

 

Registration is refused because the applied-for mark merely describes a purpose or use 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.

 

As discussed in the July 9, 2019 Office action, a mark is merely descriptive if “it immediately conveys information concerning a feature, quality, or characteristic of [an applicant’s] goods or services.”  In re N.C. Lottery, 866 F.3d 1363, 1367, 123 USPQ2d 1707, 1709 (Fed. Cir. 2017) (citing In re Bayer Aktiengesellschaft, 488 F.3d 960, 963, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)); TMEP §1209.01(b); see DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (quoting In re Abcor Dev. Corp., 588 F.2d 811, 814, 200 USPQ 215, 218 (C.C.P.A. 1978)). 

 

Applicant's mark is “APPESTAT” for use with “natural weight management supplements” in Class 5.

 

In its December 12, 2019 response, applicant argues that the applied-for mark “APPESTAT” is not descriptive because the dictionary evidence provided by the trademark examining attorney in the first Office action is incorrect and the term “appestat” has a meaning other than the meaning provided by the trademark examining attorney. Further, the applicant argues that the term is not well-known and is not commonly used in the field as it has not been proven to exist. See applicant's response at Page 2. The trademark examining attorney respectfully disagrees.

 

Whether the region of the brain which applicant's goods are used to treat has been proven to exist is not controlling on the issue of descriptiveness. Rather, descriptiveness is determined in relation to an applicant’s goods, the context in which the mark is being used, and the possible significance the mark would have to the average purchaser because of the manner of its use or intended use.  See In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (citing In re Bayer Aktiengesellschaft, 488 F.3d 960, 963-64, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)); TMEP §1209.01(b).  Descriptiveness of a mark is not considered in the abstract.  In re Bayer Aktiengesellschaft, 488 F.3d at 963-64, 82 USPQ2d at 1831.

 

In this case, the evidence attached to the first Office action from Lexico shows that the word “appestat” refers to “the region of the hypothalamus of the brain which is believed to control a person's appetite for food.” Additionally, the dictionary evidence provided by the applicant in its response indicates that “appestat” refers to a presumed or hypothetical region in the brain that functions to adjust or regulate appetite. See dictionary evidence in applicant's response at Pages 3-9. Moreover, the evidence attached to the current Office action from Lexis Nexis, Mosby’s Medical Dictionary, and PCC Community Markets shows the term “appestat” used by a variety of sources to refer to a region of the brain that affects appetite; note that webpages, websites, and dictionaries are generally competent sources for determining how the public perceives the mark in connection with applicant’s goods.  See In re N.C. Lottery, 866 F.3d 1363, 1367-68, 123 USPQ2d 1707, 1709-10 (Fed. Cir. 2017); In re Nett Designs, Inc., 236 F.3d 1339, 1341, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (citing In re Bed & Breakfast Registry, 791 F.2d 157, 160, 229 USPQ 818, 819 (Fed. Cir. 1986)); TMEP §1209.01(b). As this term appears in at least four dictionary sources and across multiple websites and webpages, it follows that the term is indeed well-known and commonly understood as referring to a region of the brain.

 

Applicant also argues that the evidence provided by the trademark examining attorney is insufficient because the webpages shown in the evidence are “old” and products are not currently available. See applicant's response at Page 2. The trademark examining attorney respectfully disagrees.

 

Whether websites and webpages are “old” is not controlling on how consumers will perceive the wording in connection with the goods. Further, the applicant has not provided evidence to support its contention that the website evidence provided by the trademark examining attorney is inaccurate and should be disregarded. As noted above, websites and webpages are generally competent sources for determining how the public perceives the mark in connection with applicant’s goods. 

 

Moreover, the evidence attached to the current Office action from Bee Pollen Hub, Finish Line, One Wellness, and Herbal Connection show that the term “appestat” is commonly used in connection with weight management supplements; the evidence showing descriptive use of the term “appestat” by third-parties in connection with supplements is incorporated herein by reference.  

 

Applicant also argues that the term “appestat” is not merely description since it is a double entendre. See applicant's response at Page 2. The trademark examining attorney respectfully disagrees.

 

A “double entendre” is an expression that has a double connotation or significance as applied to the goods.  TMEP §1213.05(c); see In re Colonial Stores Inc., 394 F.2d 549, 552-53, 157 USPQ 382, 384-85 (C.C.P.A. 1968) (finding SUGAR & SPICE a double entendre and not descriptive for bakery products because it evokes the nursery rhyme “sugar and spice and everything nice”).

 

A mark that comprises a “double entendre” will not be refused registration as merely descriptive if one of its meanings is not merely descriptive in relation to the goods and/or services.  TMEP §1213.05(c).  However, the multiple meanings that make an expression a “double entendre” must be well-recognized by the public and readily apparent from the mark itself.  See In re Calphalon Corp., 122 USPQ2d 1153, 1163-64 (TTAB 2017) (quoting TMEP §1213.05(c)) (finding SHARPIN not a double entendre in relation to cutlery knife blocks with built-in sharpeners and affirming descriptiveness refusal); In re Brown-Forman Corp., 81 USPQ2d 1284, 1287 (TTAB 2006) (finding GALA ROUGE not a double entendre in relation to wines and affirming disclaimer of ROUGE); In re The Place, Inc., 76 USPQ2d 1467, 1470-71 (TTAB 2005) (finding THE GREATEST BAR not a double entendre in relation to restaurant and bar services and affirming descriptiveness refusal).

 

In this case, the alleged double entendre created by the word “appestat” is neither well-recognized by the public, as applicant has not provided any evidence indicating such, nor readily apparent from the mark itself, as the mark is merely comprised of the known and defined term “appestat”. Thus, the applied-for mark is not a double entendre.

 

Lastly, the applicant argues that the applied-for mark is suggestive rather than descriptive. See applicant's response at Page 2. The trademark examining attorney respectfully disagrees.

 

A mark is suggestive if some imagination, thought, or perception is needed to understand the nature of the goods described in the mark; whereas a descriptive term immediately and directly conveys some information about the goods.  See Stoncor Grp., Inc. v. Specialty Coatings, Inc., 759 F.3d 1327, 1332, 111 USPQ2d 1649, 1652 (Fed. Cir. 2014) (citing DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251-52, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012)); TMEP §1209.01(a).

 

Here, the evidence attached to the first Office action and the registrant's response clearly indicates that the term “appestat” has a commonly known meaning which refers to a region of the brain that regulates one’s appetite. When used in connection with weight management supplements, then, the applied-for mark immediately and directly conveys information about the goods, namely, that the goods are nutritional weight management supplements that are used to promote weight loss and/or management by affecting the appestat to decrease the desire for food or to decrease one’s appetite.

 

Because the applied-for mark is merely descriptive of applicant's goods, refusal to register the applied-for mark is made FINAL under Section 2(e)(1) of the Trademark Act.

 

Applicant should additionally note the advisory below.

 

 

SUPPLEMENTAL REGISTER—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.

 

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).

 

 

/Justine N. Burke/

Justine N. Burke

Trademark Examining Attorney

Law Office 121

571-270-1631

Justine.Burke@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 19, 2019 for

U.S. Trademark Application Serial No. 88403709

 

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. 

 

 

/Justine N. Burke/

Justine N. Burke

Trademark Examining Attorney

Law Office 121

571-270-1631

Justine.Burke@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 19, 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.”