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:  August 05, 2019

 

 

 

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.  

 

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.

 

The requirement(s) apply to all of the goods and/or services listed in the application, unless otherwise stated.

 

 

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(a) refusal.
• Identification.

• Information.

 

 

 

SECTION 2(A) REFUSAL - DECEPTIVE

 

The refusal only applies to the applicant’s goods listed as “seafood substitutes; imitation shrimp; imitation crab; imitation lobster; imitation shellfish; plant-based seafood substitutes; plant-based shrimp substitutes; plant-based crab substitutes; plant-based lobster substitutes; plant-based shellfish substitutes.” 

 

Please note that if the “sustainable seafood” listed in the application is ultimately described as a seafood substitute or other type of plant based or imitation product, then the refusal applies to all of the goods listed in the application.

 

Registration is refused because the applied-for mark consists of or includes deceptive matter in relation to the identified goods.  Trademark Act Section 2(a), 15 U.S.C. §1052(a).  

 

A term is deceptive when all three of the following criteria are met:

 

(1)       Is the term misdescriptive of the character, quality, function, composition or use of the goods [and/or services]?

 

(2)       If so, are prospective purchasers likely to believe that the misdescription actually describes the goods [and/or services]?

 

(3)       If so, is the misdescription likely to affect the purchasing decision of a significant portion of relevant consumers?

 

In re Tapco Int’l Corp., 122 USPQ2d 1369, 1371 (TTAB 2017) (citing In re Budge Mfg. Co., 857 F.2d 773, 775, 8 USPQ2d 1259, 1260 (Fed. Cir. 1988)); TMEP §1203.02(b); see also In re Spirits Int’l, N.V., 563 F.3d 1347, 1353, 1356, 90 USPQ2d 1489, 1492-93, 1495 (Fed. Cir. 2009) (holding that the test for materiality incorporates a requirement that a “significant portion of the relevant consumers be deceived”).

 

A mark is deceptive even if only a portion of the mark is deceptive.  See In re White Jasmine LLC, 106 USPQ2d 1385, 1391 (TTAB 2013) (“It is well established that a mark may be found deceptive on the basis of a single deceptive term that is embedded in a larger mark . . . .”); Am. Speech-Language-Hearing Ass’n v. Nat’l Hearing Aid Soc’y, 224 USPQ 798, 808 (TTAB 1984).  Trademark Act Section 2(a) prohibits registration of deceptive matter, not merely deceptive marks.  See In re White Jasmine LLC, 106 USPQ2d at 1391; TMEP §1203.02.

 

In this case, applicant’s mark includes the wording “SHELLFISH”, indicating that the goods have or exhibit the following feature or characteristic:  will be made of shellfish.  However, according to the evidence of record, applicant’s goods do not in fact have or exhibit this feature or characteristic. 

 

Consumers would be likely to believe this misdescription in the mark, because the attached evidence shows that it is common in applicant’s industry for such goods to include SHELLFISH, and consumers have come to expect such feature or characteristic. 

 

A misdescriptive feature or characteristic would be material to the purchasing decision of a significant portion of the relevant consumers when the evidence demonstrates that the misdescription would make the product or service more appealing or desirable to prospective purchasers.  In re White Jasmine LLC, 106 USPQ2d 1385, 1392 (TTAB 2013) (citing In re Juleigh Jeans Sportswear Inc., 24 USPQ2d 1694, 1698-99 (TTAB 1992)); TMEP §1203.02(d). 

 

In the present case, the attached shows that the misdescriptive feature or characteristic, namely SHELLFISH, renders the goods more appealing or desirable because SHELLFISH is perceived to be a healthy food and is sometimes more expensive.  Thus, the misdescription is likely to affect a significant portion of the relevant consumers’ decision to purchase applicant’s goods.

 

Please note that the applicant’s proposed mark is not a double entendre and does not create a different commercial impression, inherent from the mark, that allows the proposed mark to be found not be deceptive.  See A. F. Gallun & Sons Corp. v. Aristocrat Leather Prods., Inc., 135 USPQ 459, 460 (TTAB 1962) (The mark COPY CALF was found not deceptive for wallets and billfolds of synthetic and plastic material made to simulate leather, because it was an obvious play on the expression "copy cat" and suggested to purchasers that the goods were imitations of items made of calf skin).  In this case, the additional wording might have a different non-deceptive or descriptive meaning, but the proposed mark does not inherently and/or specifically address the deceptiveness issue like the mark COPY CALF.  In this case, the additional wording may merely describe various other meanings, e.g., the goods are lower in calories, do not contain heavy metals, etc.  Consequently, the applicant’s proposed mark is consistent with the mark SOFTHIDE in Tanners' Council of Am., 204 USPQ 150 (TTAB 1979) (SOFTHIDE found to be deceptive for goods not made of hide) in which the additional wording SOFT did not obviate the deceptive refusal.

 

The argument that there is no deception because consumers will immediately discern the true nature of the goods services when they encounter them would not be persuasive. Deception can attach prior to seeing or encountering the goods, for example, based on advertising over the radio or Internet or via word of mouth.  See In re ALP of S. Beach, Inc., 79 USPQ2d 1009, 1014 (TTAB 2006).

 

Section 2(a) is an absolute bar to registration on both the Principal Register and the Supplemental Register.  Therefore, the trademark examining attorney cannot recommend an amendment to proceed under Section 2(f) or an amendment to the Supplemental Register. 

 

Although applicant's mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

 

If applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

 

 

IDENTIFICATION OF GOODS AND/OR SERVICES

 

The identification of goods and/or services is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  The applicant must identify the goods and/or services specifically to provide public notice to the average person who does not have an in-depth knowledge of the relevant field(s) and to enable the USPTO to classify the goods and/or services properly and to reach informed judgments concerning likelihood of confusion under 15 U.S.C. §1052(d). 

 

In an identification, an applicant must use the common commercial or generic name for the goods and/or services, be specific and all-inclusive, and avoid using indefinite words or phrases.  TMEP§§1402.01, 1402.03(a).  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.  If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language.  See id.  If applicable, open-ended terms (e.g., “including,” “such as”) must be deleted and replaced with a definite term, such as “namely,” “consisting of,” “particularly,” or “in particular.”  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03(a). 

 

The applicant should describe the goods and/or services using wording that would be generally understood by the average person.  See Schenley Indus., Inc. v. Battistoni, 112 USPQ 485, 486 (Comm’r Pats. 1957); Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954); TMEP §1402.01. “[T]echnical, high-sounding verbiage” should be avoided.  Id., 102 USPQ at 322.

 

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.

 

In this case, the applicant must clarify the nature of the “sustainable seafood” goods because the goods could be classified in more than one class depending on the nature of the goods.

 

 

Applicant may adopt the following identification if accurate [changes in bold text]:

 

 

Sustainable seafood, not live; seafood substitutes; imitation shrimp; imitation crab; imitation lobster; imitation shellfish; plant-based seafood substitutes; plant-based shrimp substitutes; plant-based crab substitutes; plant-based lobster substitutes; plant-based shellfish substitutes in International Class 29;

 

Sustainable seafood, namely, live seafood in International Class 31.

 

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

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 Sections 1(b) and/or 44:

 

(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(s) already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least two classes; however, applicant submitted a fee(s) sufficient for only one class(es).  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 Sections 1(b) and/or 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

 

 

INFORMATION ABOUT GOODS/SERVICES REQUIRED

 

To permit proper examination of the application, applicant must submit additional information about applicant’s goods.  See 37 C.F.R. §2.61(b); TMEP §§814, 1402.01(e).  The information requested below is reasonably necessary to the examination of the application because it will provide a more in-depth understanding of the mark, goods and/or services, and/or issue(s) at hand.  TMEP §814.

 

Factual information about the goods must clearly indicate how they operate, their salient features, and their prospective customers and channels of trade.  Factual information about the services must clearly indicate what the services are and how they are rendered, their salient features, and their prospective customers and channels of trade.  Conclusory statements will not satisfy this requirement for information.

 

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. 

 

Merely stating that information about the goods or services is available on applicant’s website is an insufficient response and will not make the relevant information of record.  See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).

 

 

The applicant must directly answer the following question(s) and/or provide the information requested:

 

1.  Does SHELLFISH have any significance as applied to the goods and/or services other than trademark and/or service mark significance? 

 

2.  Does SHELLFISH have any significance in the relevant trade or industry other than trademark and/or service mark significance? 

 

3.  The applicant must provide a written statement explaining whether the goods do or will consist of natural seafood (as opposed to seafood substitutes of any type). 

 

4.  The applicant must provide a sample of advertisements or promotional materials featuring the goods and/or a photograph of the identified goods, or if such materials are not available, applicant must submit samples of advertisements or promotional materials and a photograph of similar goods.

 

5.  The applicant must provide a written statement describing in detail the nature, purpose, and channels of trade of the goods.

 

 

 

QUESTIONS ABOUT THIS ACTION

 

If the applicant has technical questions about the TEAS response to Office action form, the applicant can review the electronic filing tips available online at http://www.gov.uspto.report/trademarks/teas/e_filing_tips.jsp and send technical questions to the TEAS Support Team at TEAS@uspto.gov via e-mail.  Please include your name, telephone number, serial number and/or registration number, a description of the issue, including the name of the TEAS form you are having problems with (e.g., “Response to Office Action Form,” “Request for Extension of Time to File a Statement of Use,” etc.), and a screen shot of any error message that you are receiving.  You should receive a response within two (2) hours if the e-mail message is submitted during normal business hours. 

 

 

For status inquiries or copies of documents, an applicant may check the status of or view documents filed in the trademark and/or service mark application or registration twenty-four (24) hours a day, seven (7) days a week, using the Trademark Status and Document Retrieval (TSDR) database on the USPTO website at http://tsdr.gov.uspto.report/.  To obtain this status or view these documents, enter the application serial number or registration number and click on “Status” or “Documents.”  Do not attempt to check status until approximately four to five (4-5) days after submission of a filing, to allow sufficient time for all USPTO databases to be updated.

 

 

For all other non-legal matters, including petitions to revive or reinstate an application, please contact the Trademark Assistance Center (TAC).  TAC may be reached by e-mail at TrademarkAssistanceCenter@uspto.gov or by telephone at (800) 786-9199.  For non-technical matters, TAC is open from 8:30 a.m. to 8:00 p.m. Eastern Standard Time (EST), Monday through Friday, except on federal government holidays.  A list of federal government holidays is available at the following website: http://www.opm.gov/policy-data-oversight/snow-dismissal-procedures/federal-holidays/.

 

 

If applicant has questions regarding the legal issues in this Office action, please call the assigned trademark examining attorney.

 

 

 

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

 

 

/Brian Pino/

Examining Attorney

Law Office 114

571.272.9209 Telephone

Brian.Pino2@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 August 05, 2019 for

U.S. Trademark Application Serial No. 88428324

 

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. 

 

 

/Brian Pino/

Examining Attorney

Law Office 114

571.272.9209 Telephone

Brian.Pino2@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 August 05, 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.”