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:  February 05, 2020

 

In an office action of July 17, 2019, registration was refused under Section 2(e)(1) of the Trademark Act on the basis that the mark is merely descriptive of the goods.

 

The undersigned has reviewed the response filed on January 17, 2020, and carefully considered the arguments contained therein.

 

However, 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).

 

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

Registration is refused because the applied-for mark merely describes a use and feature 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 noted in the original refusal, 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)). 

 

The mark is “LIQUID NUTRIENT” for “Powdered nutritional supplement drink mix.” The definition of a “drink” is “A liquid that is fit for drinking; a beverage.” As stated in the identification, the goods are for use in making drinks. Thus, the word “liquid” describes a use of the goods.

 

The word “nutrient” is defined as “A source of nourishment, especially a nourishing ingredient in a food.” The attached website pages and those of record are evidence that the word “nutrient” describes an ingredient of nutritional supplement drink mixes. Furthermore, the attached website pages are evidence that the words “liquid nutrient” describe powdered drink mixes that contain nutrients and are taken in liquid form. The following excerpts are representative examples.

 

1. Excerpts from http://www.natdent.com/products/vital-boost/vital-boost-supplement-facts/

 

Vital Boost is a powder liquid drink mix because the variety of antioxidants in it is more easily absorbed as a fluid. Liquid nutrients can be concentrated and better ingested by your body since no fillers or binders are used.

 

2. Excerpts from http://www.spiz.net/product-information.html

 

Introduction SPIZ is a scientifically blended formulation of carbohydrates, proteins, fatty acids, vitamins and minerals that is mixed with water.

 

It is a complete liquid food source developed to fuel the human engine during times of illness, stress, exercise and/or increased caloric need; a nutritional food and meal replacement drink that is being used by endurance athletes (cyclists, runners, triathletes, etc.), cancer and AIDS patients as well as geriatric folks trying to maintain or increase lean body mass.

 

3. Excerpts from http://www.fricksmarketonline.com/shop/pantry/health_personal_care/vitamins_supplements/supplements_specialty/alacer_emergen_c_vitamin_c_fizzy_drink_mix_tangerine_1000_mg_30_packets/p/44493

 

Alacer Emergen-C Vitamin C Fizzy Drink Mix Tangerine Description: New! Improved Flavor 7 B Vitamins 24 Nutrients Electrolytes Antioxidants

 

Applicant argues that the word “liquid” is not descriptive of the goods because they consist of a mix rather than a drink. As set forth above, the word “liquid” describes a use of the goods, which are for making drinks. Thus, this argument is not persuasive.

 

In conclusion, the words “liquid nutrient” describe a mixes for making liquid drinks containing nutrients or are for delivering liquid nutrients. Thus, the proposed mark is merely descriptive of a use and feature of the goods under Section 2(e)(1) of the Trademark Act. Registration of the proposed mark is refused and made final.

 

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).

 

Applicant is advised that, if an acceptable allegation of use and an amendment to the Supplemental Register are filed, applicant will be required to disclaim “nutrient” because this word is generic in relation to the 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).

 

Options for Response to Final Office Action

 

Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond by providing one or both of the following:

 

(1)          A request for reconsideration that fully resolves all outstanding requirements and refusals; and/or

 

(2)          An appeal to the Trademark Trial and Appeal Board with the required filing fees.

 

TMEP §715.01; see 37 C.F.R. §2.63(b)(1)-(2).

 

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).

 

 

/Khanh M. Le/

Trademark Examining Attorney

Law Office 116

U.S. Patent & Trademark Office

Khanh.Le@USPTO.gov

(571) 272-9435

 

 

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 February 05, 2020 for

U.S. Trademark Application Serial No. 88411042

 

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. 

 

 

/Khanh M. Le/

Trademark Examining Attorney

Law Office 116

U.S. Patent & Trademark Office

Khanh.Le@USPTO.gov

(571) 272-9435

 

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 February 05, 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.”