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:

 

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).

 

July 29, 2019SUMMARY OF ISSUES:

 

• Section 2(e)(1) Refusal – Mark is Merely Descriptive
• Section 2(f) Acquired Distinctiveness Advisory

 

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

 

Registration is refused because the applied-for mark merely describes a feature of applicant’s services.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq. Specifically, applicant's mark HAWKERS merely describes that the restaurant features hawker-style food or food created using hawker recipes (i.e., hawker cuisine).

 

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., DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (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)). 

 

Determining the descriptiveness of a mark is done in relation to an applicant’s goods and/or services, 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 instance, the wording "hawker" refers to a type of Asian street food cuisine that is generally sold at outdoor food stalls or at "hawker centres," which are generally known as " • Asia An outdoor complex of stalls selling street food." See http://topmeaning.com/english/hawker%20centre. Please also see the attached Internet evidence showing use of "hawker" in connection with Asian street food cuisine.

 

As indicated by the attached evidence from applicant’s website at http://eathawkers.com/story/, applicant's restaurant services feature this type of Asian street food or "hawker-style" cuisine. For example, applicant's website states the following: “We wanted to build a restaurant that would tell the story of the hawker experience in a subtle and design-conscious way”, “Prominent on the streets of Asia, “hawkers” are street vendors who depend on locally grown ingredients to create dishes sold from mobile carts and stands”, “If you’ve ever traveled to Asia, you will know that the best foods are served by local hawkers”, “each hawker stall specializes in one or two dishes. Even in modern Asia, many decades-old hawker stalls are still renowned for the “best” of whatever dish they have mastered. Hawker stalls are such valuable real estate, that many are passed down from parent to child for generations.” In addition, applicant's logo as featured on the specimen uses the wording "HAWKERS ASIAN STREET FARE" which further highlights the descriptiveness of "HAWKER" as referring to a type of Asian street food.

 

Moreover, various press about applicant's restaurant services further note that applicant is providing "hawker" food or cuisine, including the following Internet articles:

 

http://jacksonvillemag.com/street-wise/ - "Hawkers encourages sharing with a focus on street foods found throughout Asian hawker centers (hence the name)."

 

http://www.orlandotastes.com/2014/02/hawkers-asian-street-fare.html - "Hawkers Asian Street Fare has been doing a pretty good job of bringing the flavor and excitement of Asian Hawker cuisine to Orlando."

 

http://articles.orlandosentinel.com/2011-07-18/entertainment/os-dining-hawkers-asian-street-fare-20110718_1_spice-hawkers-seasoning - "Kaleb Harrell, one of four owners, credits the culinary exploits of chef Anthony Bourdain and his 'No Reservations' TV show for expanding the palates of the dining public. 'Years ago, all-you-can-eat buffets of Asian food were everywhere,' Harrell says. 'We saw an opportunity to introduce a more authentic street food in one place with a tapas approach to the menu. Some of the other owner's extended family members are working hawkers so we've been able to refine those family recipes into our menu.'"

 

http://www.charlotteagenda.com/131488/hawkers-asian-street-food-restaurant-south-end/ - “Hawkers, an Orlando-based Asian restaurant inspired by hawker stalls of southeast Asia…Hawkers’ menu features “the best and most popular street foods from all over Asia” and is divided into five main categories: small plates, noodle soups, salads, noodles and rice dishes.”

 

Material obtained from the Internet is generally accepted as competent evidence.  See In re Fitch IBCA Inc., 64 USPQ2d 1058, 1060-61 (TTAB 2002) (accepting Internet evidence to show descriptiveness); TBMP §1208.03; TMEP §710.01(b).

 

Accordingly, because the applicant’s mark merely describes a feature of applicant’s restaurant services, namely, that the services feature hawker-style food or food created using hawker recipes (i.e., hawker cuisine), registration is refused under Section 2(e)(1).

 

SECTION 2(f) ACQUIRED DISTINCTIVENESS ADVISORY

 

Although registration on the Principal Register has been refused, applicant may respond to the refusal by submitting evidence and arguments in support of registration and/or by amending the application to assert a claim of acquired distinctiveness under Trademark Act Section 2(f).  See 15 U.S.C. §1052(f).  Amending the application to Section 2(f) does not preclude applicant from also submitting arguments against the refusal(s).

 

Generally, an applicant may amend an application to the Principal Register by asserting a claim of acquired distinctiveness under Section 2(f) by (1) submitting actual evidence that the mark has acquired distinctiveness of the goods and/or services, (2) claiming ownership of an active prior U.S. registration for the same mark for sufficiently similar goods and/or services, or (3) providing the following verified statement of five years’ use:  “The mark has become distinctive of the goods and/or services through the applicant’s substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for at least five years immediately before the date of this statement.”  See 15 U.S.C. §1052(f); 37 C.F.R. §2.41(a); TMEP §§1212.03-.06 et seq.

 

However, in this case, the USPTO will not accept a verified statement of five years’ use alone to establish distinctiveness because applicant’s mark is highly descriptive of the goods and/or services.  See In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 1336-37, 116 USPQ2d 1262, 1265 (Fed. Cir. 2015); Alcatraz Media, Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1766 (TTAB 2013); TMEP §1212.05(a).  An applicant’s evidentiary burden of showing acquired distinctiveness increases with the level of descriptiveness of the mark sought to be registered; a more descriptive term requires more evidence.  Royal Crown Co. v. Coca-Cola Co., 892 F.3d 1358, 1365, 127 USPQ2d 1041, 1045 (Fed. Cir. 2018) (citing In re Steelbuilding.com, 415 F.3d 1293, 1300, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005)).

 

In addition to the evidence in (2) and (3), applicant may submit evidence of “advertising expenditures, sales success, length and exclusivity of use, unsolicited media coverage, and consumer studies (linking the name to a source).”  In re Change Wind Corp., 123 USPQ2d 1453, 1467 (TTAB 2017) (quoting In re Steelbuilding.com, 415 F.3d 1293, 1300, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005)).  A showing of acquired distinctiveness need not consider all of these types of evidence; no single factor is determinative.  In re Steelbuilding.com, 415 F.3d at 1300, 75 USPQ2d at 1424; see TMEP §§1212.06 et seq.  Rather, the determination involves assessing all of the circumstances involving the use of the mark.  See In re Steelbuilding.com, 415 F.3d at 1300, 75 USPQ2d at 1424 (citing Thompson Med. Co., Inc. v. Pfizer Inc., 753 F.2d 208, 217, 225 USPQ2d 124, 131-32 (Fed. Cir. 1985)).

 

RESPONSE TEAS PLUS / TEAS RF

 

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.  

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.   

 

How to respond.  Click to file a response to this nonfinal Office action  

 

 

/Blake Lovelace/

James Blake Lovelace

Examining Attorney

Law Office 119

(571)-270-1533

james.lovelace@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 29, 2019 for

U.S. Trademark Application Serial No. 88424965

 

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. 

 

 

/Blake Lovelace/

James Blake Lovelace

Examining Attorney

Law Office 119

(571)-270-1533

james.lovelace@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 29, 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.”