To: | Fumari, Inc. (jpaul@techlg.com) |
Subject: | U.S. Trademark Application Serial No. 88437933 - SPICED CHAI - N/A |
Sent: | August 13, 2019 07:47:44 PM |
Sent As: | ecom105@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88437933
Mark: SPICED CHAI
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Correspondence Address:
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Applicant: Fumari, Inc.
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Reference/Docket No. N/A
Correspondence Email Address: |
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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 13, 2019
SEARCH OF OFFICE’S DATABASE OF MARKS
FAILURE TO FUNCTION – INFORMATIONAL WORDING
Registration is refused because the applied-for mark is a term that does not function as a trademark or service mark to indicate the source of applicant’s goods and/or services and to identify and distinguish them from others. Trademark Act Sections 1, 2, 3, and 45, 15 U.S.C. §§1051-1053, 1127. In this case, the applied-for mark is a term that is commonly used by those in applicant’s particular trade or industry to merely convey information about applicant’s or similar goods and/or services. See In re Boston Beer Co., 198 F.3d 1370, 1372-74, 53 USPQ2d 1056, 1058-59 (Fed. Cir. 1999) (holding THE BEST BEER IN AMERICA for beer and ale a common claim of superiority and incapable of registration); In re Melville Corp., 228 USPQ 970, 971 (TTAB 1986) (holding BRAND NAMES FOR LESS for retail clothing store services a common promotional phrase and incapable of registration); TMEP §1202.04(a).
Slogans and terms that are merely informational in nature, such as statements or laudatory phrases about goods and/or services ordinarily used in business or in a particular trade or industry, are not registrable. See In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229 (TTAB 2010). Determining whether the slogan or term functions as a trademark or service mark depends on how it would be perceived by the relevant public. In re Eagle Crest, Inc., 96 USPQ2d at 1229; In re Aerospace Optics, Inc., 78 USPQ2d at 1862; TMEP §1202.04. “The more commonly a [slogan or term] is used, the less likely that the public will use it to identify only one source and the less likely that it will be recognized by purchasers as a trademark [or service mark].” In re Hulting, 107 USPQ2d 1175, 1177 (TTAB 2013) (quoting In re Eagle Crest, Inc., 96 USPQ2d at 1229); TMEP §1202.04(b).
The attached evidence from various tobacco companies shows that this term is commonly used by those in applicant’s particular trade or industry to indicate a particular flavor of the products. In addition, attached is evidence from articles and blogs that shows the term SPICED CHAI being referred to as a flavor of the goods. Because consumers are accustomed to seeing this term used in this manner, when it is applied to applicant’s goods, they would perceive it merely as informational matter indicating the flavor of the tobacco. Thus, this term would not be perceived as a mark that identifies the source of applicant’s goods and/or services.
An applicant may not overcome this refusal by amending the application to seek registration on the Supplemental Register or asserting a claim of acquired distinctiveness under Section 2(f). TMEP §1202.04(d); see In re Eagle Crest, Inc., 96 USPQ2d at 1229. Nor will submitting a substitute specimen overcome this refusal. See TMEP §1202.04(d).
Based on the above, the applicant’s mark consists of informational wording and thus fails to function as a source indicator for the applicant’s goods. Therefore, the applicants mark is refused under Section 1, 2, and 45 of the Trademark Act.
Applicant should note the following additional ground for refusal.
SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
In the present case, the applicant has applied to register the mark SPICED CHAI for “Hookah tobacco; Tobacco; Tobacco pouches”. According to Merriam Webster’s dictionary, the term SPICED means “to add something that gives flavor or interest” and the term CHAI means “a beverage that is a blend of black tea, honey, spices, and milk”. Therefore the applicants mark merely describes that applicant’s tobacco has the flavor of spiced chai tea. The applicants own website states “Drink in the flavor of Spiced Chai through fluffy clouds of smoke. A Fumari team favorite, this hookah tobacco flavor is a delicious creamy blend of sweet, smooth vanilla with complex aromas of cinnamon, nutmeg, and cardamom”. Please see attached dictionary and Internet evidence.
Therefore, the mark SPICED CHAI, as applied to the identified goods, merely describes a feature of applicant’s goods. Accordingly, the proposed mark is merely descriptive, and registration is refused on the Principal Register under Section 2(e)(1).
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
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 response to this nonfinal Office action
/Lakeisha S. Munn Lewis/
Trademark Examining Attorney
Law Office 105
571-272-1910
lakeisha.lewis@uspto.gov
RESPONSE GUIDANCE