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 16, 2020

 

 

INTRODUCTION

 

This FINAL Office action is in response to applicant’s communication filed on December 20, 2019.

 

In a previous Office action dated June 20, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(e)(1) for a merely descriptive mark.  In addition, applicant was required to satisfy the following requirement: provide information about the goods.

 

Based on applicant’s response, the trademark examining attorney notes that the following requirement has been satisfied: information provided.  See TMEP §713.02. 

 

Further, 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:

 

• Refusal under Section 2(e)(1) – Mark is Merely Descriptive

 

REFUSAL UNDER SECTION 2(e)(1) – MARK IS MERELY DESCRIPTIVE

 

The applied-for mark is “CHERRYCREAM” in standard character form for “alcoholic beverages except beers; wines” in International Class 33.

 

Registration is refused because the applied-for mark merely describes a quality, feature, characteristic, or ingredient 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 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)). 

 

The determination of whether a mark is merely descriptive is made in relation to an applicant’s goods, not in the abstract.  DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012); In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); TMEP §1209.01(b); see, e.g., In re Polo Int’l Inc., 51 USPQ2d 1061, 1062-63 (TTAB 1999) (finding DOC in DOC-CONTROL would refer to the “documents” managed by applicant’s software rather than the term “doctor” shown in a dictionary definition); In re Digital Research Inc., 4 USPQ2d 1242, 1243-44 (TTAB 1987) (finding CONCURRENT PC-DOS and CONCURRENT DOS merely descriptive of “computer programs recorded on disk” where the relevant trade used the denomination “concurrent” as a descriptor of a particular type of operating system). 

 

“Whether consumers could guess what the product [or service] is from consideration of the mark alone is not the test.”  In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).

           

The wording “CHERRY” means “a small, fleshy fruit containing a smooth, hard pit and ranging from yellow to very dark red, including sweet, sour, and duke cherries,” “made with cherries,” or “having a flavor like that of cherries.”  “CREAM” means “the yellowish part of milk containing from 18 to about 40 percent butterfat,” and, more specifically, it means “a food prepared with cream” or “something having the consistency of cream.”  See the previously attached dictionary evidence from Merriam-Webster and Collins Dictionary.  As listed in the application, applicant’s identification of goods is broad enough to include cherry, cream, and cherry cream as an ingredient, quality, feature, or characteristic.  Taken together, when used in connection with the identification of goods, the mark “CHERRYCREAM” immediately tells consumers that applicant’s goods feature alcoholic drinks having a flavor like that of cherries, made with cherries and cream, and having the consistency of cream.

 

A term that describes an ingredient of the goods is merely descriptive.  TMEP §1209.01(b); see In re TriVita, Inc., 783 F.3d 872, 114 USPQ2d 1574 (Fed. Cir. 2015) (holding NOPALEA merely descriptive of dietary and nutritional supplements containing nopal juice); In re Keebler Co., 479 F.2d 1405, 178 USPQ 155 (C.C.P.A. 1973) (holding RICH ‘N CHIPS merely descriptive of chocolate chip cookies); In re Andes Candies Inc., 478 F.2d 1264, 178 USPQ 156 (C.C.P.A. 1973) (holding CREME DE MENTHE merely descriptive of candy); In re Entenmann’s, Inc., 15 USPQ2d 1750 (TTAB 1990) (holding OATNUT merely descriptive of bread containing oats and hazelnuts); Flowers Indus., Inc. v. Interstate Brands Corp., 5 USPQ 2d 1580 (TTAB 1987) (holding HONEY WHEAT merely descriptive of bread containing honey and wheat).

 

Applicant argues that “the joining of the words ‘CHERRY’ and ‘CREAM’ in a particular order and without a space between them, gives CHERRYCREAM the requisite distinctive character (based on such an unusual combination of words resulting in a new, fanciful term) for the purposes of approval.”  However, consumers are not likely to find the lack of a space between two words to create a new and fanciful meaning apart from the existing meanings of the two words.  The applicant’s discussion of the idea that “[c]ream does not come from cherries, nor do cherries contain a cream-like substance” appears to distract from the context of the mark’s usage in that cherries and cream can be combined together in the same alcoholic beverage.  Consumers are likely to interpret the words within their ordinary meaning, rather than coming up with applicant’s fancifully created meaning of a “fictitious, rich, milky substance that comes from the inside of a cherry.”

 

Applicant’s minor change in spelling by combining the two part term “CHERRY CREAM” into a single word “CHERRYCREAM” does not alter the commercial impression of this term.   The individual words within the composite term retain their original meaning and pronunciation and no additional meaning or pronunciation is created by their combination.  A novel spelling or an intentional misspelling that is the phonetic equivalent of a merely descriptive word or term is also merely descriptive if purchasers would perceive the different spelling as the equivalent of the descriptive word or term.  See In re Quik-Print Copy Shop, Inc., 616 F.2d 523, 526 & n.9, 205 USPQ 505, 507 & n.9 (C.C.P.A. 1980) (holding “QUIK-PRINT,” phonetic spelling of “quick-print,” merely descriptive of printing and photocopying services); In re Calphalon Corp., 122 USPQ2d 1153, 1163 (TTAB 2017) (holding “SHARPIN”, phonetic spelling of “sharpen,” merely descriptive of cutlery knife blocks with built-in sharpeners); In re Carlson, 91 USPQ2d 1198, 1203 (TTAB 2009) (holding “URBANHOUZING,” phonetic spelling of “urban” and “housing,” merely descriptive of real estate services); TMEP §1209.03(j).  Therefore, the term CHERRYCREAM merely describes a characteristic or feature of applicant’s goods.

 

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., In re Petroglyph Games, Inc., 91 USPQ2d 1332, 1341 (TTAB 2009) (holding BATTLECAM merely descriptive of computer game software with a feature that involve battles and provides the player with the option to utilize various views of the battlefield); In re Cox Enters., 82 USPQ2d 1040, 1043 (TTAB 2007) (holding THEATL merely descriptive of publications featuring news and information about Atlanta where THEATL was the equivalent of the nickname THE ATL for the city of Atlanta); In re Tower Tech, Inc., 64 USPQ2d 1314, 1317-18 (TTAB 2002) (holding SMARTTOWER merely descriptive of highly automated cooling towers); In re Sun Microsystems, Inc., 59 USPQ2d 1084, 1085 (TTAB 2001) (holding AGENTBEANS merely descriptive of computer software for use in developing and deploying application programs on a global computer network).

 

Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the goods 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 nondescriptive meaning in relation to the goods.  Specifically, the terms CHERRY and CREAM each have descriptive definitions for the goods, and the phrase taken together, CHERRYCREAM, also has a descriptive commercial impression in relation to the goods.

 

Applicant points out that the evidence in the first Office Action focuses on the descriptive use of the wording “CHERRY” and “CREAM” for flavored liqueurs, spirits, and cocktails, which is within the scope of “alcoholic beverages except beers.”  The examining attorney is attaching supplementary evidence to show that wine consumers would reasonably expect wines to also contain cherries or cream as ingredients or flavorings.  This finding of descriptiveness is supported by third party use in applicant’s industry.  The examining attorney has attached and previously sample websites from the Internet that show that third parties in the alcoholic beverage industry use the terms “CHERRY” and “CREAM” to name a characteristic or feature of the goods in applicant’s identification of goods.  This includes the following sample attachments:

 

• ABC Fine Wine & Spirits, product page on “Ballotin Chocolate Cherry Cream Liqueur.”  http://www.abcfws.com/ballotin-chocolate-cherry-cream-liqueur/977005
• Arlington Wine and Liquor, product page for “Baileys - Chocolate Cherry Cream Liqueur.” http://www.arlingtonwine.net/spirits/Baileys-Chocolate-Cherry-Cream-Liqueur-w45703188n
• BetterRecipes, recipe for “Cherry Cream Liqueur.” http://drink.betterrecipes.com/cherry-cream-liqueur.html
• Beverage Dynamics, article entitled, “Redefining the Cream Liqueur Category.” http://beveragedynamics.com/2018/02/10/defining-the-cream-liqueur-category/
• Constantia, product page for “Cherry Cream Liqueur.” http://constantiafarmstallonline.co.za/products/cherry-cream-liqueur-750-ml.html
• Drinks Mixer, recipe for “Cherry Cream Rum.” http://www.drinksmixer.com/drinkl13m115.html
• Magic Skillet, recipe for “Cherry Cream Liqueur.” http://magicskillet.com/recipe/cherry-cream-liqueur/
• The Cookie Rookie, recipe for “Adult Dark Cherry Cream Soda.” http://www.thecookierookie.com/adult-dark-cherry-cream-soda/
• The Whisky Exchange, page on “cream liqueurs.”  Stating, “When considering the cream liqueur category, it is often difficult to see past its most famous exponent, the brand that first invented, and then became, the entire category. But these days, despite Baileys' continued dominance, there is more choice available than ever before for those prepared to seek out the margins.” “Fans of Baileys should look for Amarula’s wild fruit and vanilla flavours in the first instance, to convince themselves that a choice does, in fact, exist.”  http://www.thewhiskyexchange.com/c/347/cream-liqueurs
• Total Wine, product listings under the category narrowed by of Spirits > Liqueurs/Cordials/Schnapps > Cream. http://www.totalwine.com/spirits/liqueurs-cordials-schnapps/cream/c/000814?tab=fullcatalog
• Wikipedia, page on “cream liqueur.” http://en.wikipedia.org/wiki/Cream_liqueur
• Dark cherry flavored whiskey. http://www.legacylr.com/WHISKEY-WHISKY-Scotch-Caliber-Dark-Cherry-Whiskey-750ml-857186006162/
• Dark cherry flavored moonshine. http://mbroland.com/products/
• Dark cherry flavored hard cider. http://www.locustcider.com/ciders/dark-cherry/
• BevMo!, selling cherry flavored wines and alcoholic beverages and other food and drink items. http://www.bevmo.com/
• Cherrywine.com, selling cherry flavored wines. http://cherrywine.com/cherry-wines-shippable-to-district-of-columbia/, http://cherrywine.com/cherry-wines-shippable-to-alabama/
• Drizly, selling cherry flavored wines and alcoholic beverages and/or other food and drink items, and also cream wines. http://drizly.com/search?q=cherry, http://drizly.com/, http://drizly.com/search?q=cream%20sherry  
• Google Shopping, search results for cherry wine. http://www.google.com/search?q=cherry+wine&rlz=1C1GCEB_enUS863US863&tbm=shop&source=lnms&sa=X&ved=0ahUKEwje4dn7hInnAhWQjlkKHZ-5BkEQ_AUIDigB&biw=1536&bih=722&dpr=1.25
• Total Wine, selling cherry flavored wine, liqueur, and fruit based wines, and cream wines. http://www.totalwine.com/wine/fruit-wine/fruit-blends/liquid-popsicle-cherry/p/224500750?s=203&igrules=true, http://www.totalwine.com/wine/fruit-wine/c/000035
• Total Wine, selling various cream wines and cream sherry, a type of wine.  http://www.totalwine.com/
• American Heritage Dictionary, definition of “sherry,” as “[a] fortified Spanish wine ranging from very dry to sweet and from amber to brown” or “[a] similar wine made elsewhere.”  http://www.ahdictionary.com/word/search.html?q=sherry

 

Applicant also submits “that CHERRY-formative compound marks in Classes 32 and 33 are consistently approved without a descriptiveness refusal.”  However, the fact that third-party registrations exist for marks allegedly similar to applicant’s mark is not conclusive on the issue of descriptiveness.  See In re Scholastic Testing Serv., Inc., 196 USPQ 517, 519 (TTAB 1977); TMEP §1209.03(a).  An applied-for mark that is merely descriptive does not become registrable simply because other seemingly similar marks appear on the register.  In re Scholastic Testing Serv., Inc., 196 USPQ at 519; TMEP §1209.03(a).

 

It is well settled that each case must be decided on its own facts and the Trademark Trial and Appeal Board is not bound by prior decisions involving different records.  See In re Nett Designs, Inc., 236 F. 3d 1339, 1342, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001); In re Datapipe, Inc., 111 USPQ2d 1330, 1336 (TTAB 2014); TMEP §1209.03(a).  The question of whether a mark is merely descriptive is determined based on the evidence of record at the time each registration is sought.  In re theDot Commc’ns Network LLC, 101 USPQ2d 1062, 1064 (TTAB 2011); TMEP §1209.03(a); see In re Nett Designs, Inc., 236 F.3d at 1342, 57 USPQ2d at 1566.

 

Given the analysis and evidence above, the mark is merely descriptive of the goods and is refused registration on the Principal Register under Section 2(e)(1) of the Trademark Act.

 

SUPPLEMENTAL REGISTER ADVISORY

 

Although an amendment to the Supplemental Register would normally be an appropriate response to this descriptiveness refusal only under Trademark Act Section 2(e)(1), 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.

 

Advisory on How to File an Amendment to Allege Use

 

To amend an intent-to-use application under Trademark Act Section 1(b) to use in commerce, an applicant must file, prior to approval of the mark for publication, an acceptable amendment to allege use.  See 15 U.S.C. §1051(c); 37 C.F.R. §2.76; TMEP §§806.01(b), 1103.  An amendment to allege use must satisfy the following requirements:

 

(1)       STATEMENTS:  The following statements:  “The applicant is the owner of the mark sought to be registered.” and “The applicant is using the mark in commerce on or in connection with all the goods/services in the application or notice of allowance, or as subsequently modified.”

 

(2)       DATES OF FIRST USE:  The date of first use of the mark anywhereon or in connection with the goods, and the date of first use of the mark in commerceas a trademark.  See more information about dates of use.

 

(3)       GOODS:  The goods specified in the application.

 

(4)       SPECIMEN:  A specimen showing how applicant uses the mark in commerce for each class of goods for which use is being asserted.  See more information about specimens.

 

(5)       FEE:  A filing fee for each international class of goods for which use is being asserted (find current fee information).

 

(6)       VERIFICATION:  Verification of (1) through (4) above in an affidavit or signed declaration under 37 C.F.R. §2.20.  See more information about verification.

 

See 37 C.F.R. §2.76(b); TMEP §1104.08.

 

An amendment to allege use may be filed online via the Trademark Electronic Application System (TEAS).  Filing an amendment to allege use is not considered a response to an Office action.  37 C.F.R. §2.76(h); TMEP §1104.  An applicant must file a separate response to any outstanding Office action.  TMEP §1104; see 37 C.F.R. §2.76(h). 

 

Benefits of Supplemental Registration

 

Although registration on the Supplemental Register does not afford all the benefits of registration on the Principal Register, it does provide the following advantages to the registrant:

 

(1)       Use of the registration symbol ® with the registered mark in connection with the designated goods, which provides public notice of the registration and potentially deters third parties from using confusingly similar marks.

 

(2)       Inclusion of the registered mark in the USPTO’s database of registered and pending marks, which will (a) make it easier for third parties to find it in trademark search reports, (b) provide public notice of the registration, and thus (c) potentially deter third parties from using confusingly similar marks.

 

(3)       Use of the registration by a USPTO trademark examining attorney as a bar to registering confusingly similar marks in applications filed by third parties.

 

(4)       Use of the registration as a basis to bring suit for trademark infringement in federal court, which, although more costly than state court, means judges with more trademark experience, often faster adjudications, and the opportunity to seek an injunction, actual damages, and attorneys’ fees and costs.

 

(5)       Use of the registration as a filing basis for a trademark application for registration in certain foreign countries, in accordance with international treaties.

 

See 15 U.S.C. §§1052(d), 1091, 1094; J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition §§19:33, 19:37 (rev. 4th ed. Supp. 2017).

 

RESPONSE GUIDELINES

 

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 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. 

 

Proper 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.  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).

 

 

/D. Zarick/

D. Zarick

Trademark Examining Attorney

Law Office 126

(571) 270-5013

diana.zarick@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 16, 2020 for

U.S. Trademark Application Serial No. 88429508

 

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. 

 

 

/D. Zarick/

D. Zarick

Trademark Examining Attorney

Law Office 126

(571) 270-5013

diana.zarick@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 16, 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.”