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 19, 2020

 

 INTRODUCTION

 

This Office action is in response to applicant’s communication filed on January 3, 2020.

 

In a previous Office action dated July 12, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(e)(1) Refusal- Mark is Merely Descriptive.  

 

In applicant’s response, applicant provided arguments against the Section 2(e)(1) refusal.  See TMEP §§713.02, 714.04.  While these arguments are appreciated, they have not been found persuasive. Id.

 

Thus, the trademark examining attorney maintains and now makes FINAL the refusal in the summary of issues 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—Mark is Merely Descriptive
• Supplemental Register Advisory

 

Section 2(e)(1) Refusal—Mark is Merely Descriptive

 

Registration is refused because the applied-for mark merely describes a feature and purpose 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.  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)). 

 

Here, applicant’s mark, “BODY BUILDER” is descriptive of a feature and purpose of their goods, “Animal feed.” The previously attached evidence from the Merriam Webster Dictionary shows that “bodybuilding” refers to “developing of the body through exercise and diet.” Here, applicant’s goods, animal feed, serve to aid in the building or development of an animal’s body. The attached evidence from the Lexico, Powered by Oxford, website, shows that “BODY” Refers to “The physical structure of a person or an animal, including the bones, flesh, and organs, while “BUILD” may refer to “Increase the size, intensity, or extent of.” When combined, “BODY” and “BUILDER” refer to something or someone that increases the size of a body. Here, applicant’s goods are intended to create a stronger animal body. Thus, the wording in the mark describes the purpose of the goods as a body builder. Further, the previously attached evidence from the ValleyVet and SmartPak websites shows that the wording in applicant’s mark is used in connection with animal feed and supplements. The Valley Vet website explains that animal feed may be used to improve the muscle size and definition of animals. Thus, applicant’s mark describes the intended purpose of the goods.

 

In applicant’s response, applicant argues that the two examples provided re: descriptiveness shows “interest by others to use it in a suggestive nature.” Applicant provides no evidence or supporting arguments for their contention that “BODY BUILDER” is being used by the ValleyVet and SmartPak sources in a suggestive manner. The ValleyVet website specifically states that their Body Builder feed is intended to “increase rack size, provide muscle definition, increase bloom, and put on more shine.” Thus, the goods are specifically intended to build the body of a lamb. There is nothing suggestive about the use of “Body Builder” on this webpage. The SmartPak website uses “Body Builder” in connection with equine muscle supplements under the category of “Horse Weight Gain & Muscle Supplements”, showing that these goods are in fact, intended to build upon an animals’ physique. These sources use the wording in a descriptive manner.

 

Applicant also argues that Merriam Webster dictionary defines “body building” as “the developing of the body through exercise and diet; specifically: the developing of the physique for competitive exhibition.” Applicant contends that physical exhibition is done by humans, not animals. This argument is inapposite. There is nothing in the Merriam-Webster Dictionary evidence to suggest that body building is performed by humans only. In fact, the ValleyVet website shows that their feed is for use by “Show Lambs.” Showing livestock is a popular practice, a deeply rooted American tradition. The attached evidence from the Nutrena website reflects the popularity of “show lambs & goats”, and contains a section of the website specifically dedicated to animal feed for show animals. The attached evidence from the Wikipedia® website speaks to the nature of livestock shows, which use criteria of “muscle, structural correctness, frame size, style and balance.” Thus, building muscle is in fact, a desirable trait in animals that may be accomplished in part, through a proper diet of the right type of animal feed.

 

Applicant’s submission of Google® search results for “body builder” is also unpersuasive to support applicant’s arguments that the public views “body builder” in connection with humans only. A search results summary from an Internet search engine has limited probative value because such a list does not show the context in which the term or phrase is used on the listed web pages and may not include sufficient surrounding text to show the context within which the term or phrase is used.  TBMP §1208.03; see In re Bayer AG, 488 F.3d 960, 967, 82 USPQ2d 1828, 1833 (Fed. Cir. 2007); In re Star Belly Stitcher, Inc.,107 USPQ2d 2059, 2062 n.3 (TTAB 2013); TMEP §710.01(b). A search for “body builder” alone may result in depiction of human body builders, but when “BODY BUILDER” is considered in connection with the types of goods applicant provides, namely, animal feed, a consumer will be lead to believe that the products are intended to build upon the body of an animal and improve their physique.

 

It should also be noted that the trademark examining attorney’s argument was never that the animals themselves are body builders akin to Arnold Schwarzenegger. Here, the animal feed provided by applicant is intended to build an animal’s body. It is a body builder. The newly attached evidence from applicant’s website speaks to the descriptive nature of their mark. The Product Reference sheet states that their goods are intended to “help build muscle”. “BUILD” is used in the product reference guide, and it is used to reference the animal’s muscle, a part of their body.

 

Generally, if the individual components of a mark retain their descriptive meaning in relation to the goods, 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 non-descriptive meaning in relation to the goods.  Specifically, the mark gives off the commercial impression of feed intended to build an animals’ body.

 

In light of the foregoing, it is evident the mark is merely descriptive of a feature and purpose of applicant’s goods.

 

Supplemental Register Advisory

 

A mark in an application under Trademark Act Section 1(b) is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use under 37 C.F.R. §2.76 has been filed.  37 C.F.R. §§2.47(d), 2.75(b); TMEP §§815.02, 1102.03.  When a Section 1(b) application is successfully amended 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 the amendment to allege use.  TMEP §§816.02, 1102.03; see 37 C.F.R. §2.75(b).

 

Response to Final Office Action

 

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).

 

 

Rosen, Amanda

/Amanda Rosen/

Examining Attorney

Law Office 121

(571) 270-5984

Amanda.Rosen@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 January 19, 2020 for

U.S. Trademark Application Serial No. 88406555

 

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. 

 

 

Rosen, Amanda

/Amanda Rosen/

Examining Attorney

Law Office 121

(571) 270-5984

Amanda.Rosen@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 January 19, 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.”