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 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 28, 2019
The assigned examining attorney has reviewed the referenced application and determined the following.
SEARCH RESULTS
The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d),
15 U.S.C. §1052(d). TMEP §704.02. However, the applicant must note the following.
SUMMARY OF ISSUES:
- Descriptiveness refusal
- Identification of goods
- Attorney information
DESCRIPTIVENESS REFUSAL
Registration is refused because the applied-for mark merely describes both a feature and characteristic 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 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)).
Applicant is seeking registration of the mark “OATIES” for “Grain-based breakfast and snack foods; oatmeal-based breakfast and snack foods; breakfast and snack foods consisting
primarily of grains, grains and fruit, or grains and chocolate chips; grain-based breakfast and snack bars; oatmeal-based breakfast and snack bars.”
The determination of whether a mark is merely descriptive is made in relation to an applicant’s goods
and 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).
As demonstrated by the attached Internet evidence, the word OATIES describes a specific type of grain based or oatmeal based biscuits or cookie.
Applicant’s goods are various breakfast and snack foods, which could include grain based or oatmeal based biscuits or cookies. Thus, the term describes a feature and characteristic of the goods. Websites and webpages are
generally a competent source for determining how the public perceives the mark in connection with applicant’s goods. See In re N.C. Lottery, 866 F.3d
1363, 1367-68, 123 USPQ2d 1707, 1709-10 (Fed. Cir. 2017); In re Nett Designs, Inc., 236 F.3d 1339, 1341, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (citing In re Bed & Breakfast
Registry, 791 F.2d 157, 160, 229 USPQ 818, 819 (Fed. Cir. 1986)); TMEP §1209.01(b).
Determining the descriptiveness of a mark is done in relation to an applicant’s goods, 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. When considering the proposed mark in relation to the applicant’s grain based and oatmeal based foods,
it is clear that the word OATIES describes both a feature and characteristic of the goods.
The fact that a word or term is not found in the dictionary is not controlling on
the question of registrability when the word or term has a well understood and recognized meaning. In re Orleans Wines, Ltd., 196 USPQ 516, 517
(TTAB 1977); TMEP §1209.03(b); see In re Gould Paper Corp., 834 F.2d 1017, 1018, 5 USPQ2d 1110, 1111-12 (Fed. Cir. 1987); In re
Planalytics, Inc., 70 USPQ2d 1453, 1456 (TTAB 2004); In re Tower Tech Inc., 64 USPQ2d 1314 (TTAB 2002). Again, the evidence of record
demonstrates that the word OATIES has a well understood and recognized meaning.
In addition to being merely descriptive, the applied-for mark appears to be generic in connection with
the identified goods and, therefore, incapable of functioning as a source-identifier for applicant’s goods. In re Gould Paper Corp., 834 F.2d
1017, 5 USPQ2d 1110 (Fed. Cir. 1987); In re Empire Tech. Dev. LLC, 123 USPQ2d 1544 (TTAB 2017); see TMEP §§1209.01(c) et seq., 1209.02(a). Under these circumstances, neither an amendment to proceed under Trademark Act Section 2(f) nor an amendment to the Supplemental Register can be recommended. See TMEP §1209.01(c).
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by
submitting evidence and arguments in support of registration.
INFORMALITY
If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informality.
IDENTIFICATION OF GOODS
The highlighted wording “grain-based breakfast and snack foods; oatmeal-based
breakfast and snack foods; breakfast and snack foods consisting primarily of grains, grains and fruit, or grains and chocolate chips; grain-based breakfast
and snack bars; oatmeal-based breakfast and snack bars” in the identification of goods for International Class 30 must be clarified to indicate the specific nature of the goods. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.
Applicant may substitute the following wording, if accurate: grain-based breakfast foods, namely,
(listing the specific items)and grain-based snack foods; oatmeal-based breakfast foods, namely, (listing specific items) and grain-based snack foods; breakfast foods consisting primarily of grains, grains and fruit, or grains and chocolate chips, namely, (listing the specific items) and snack foods consisting primarily of grains,
grains and fruit, or grains and chocolate chips; grain-based breakfast and snack bars; oatmeal-based breakfast and snack bars.”
Applicant may amend the identification to clarify or limit the goods and/or services, but not to
broaden or expand the goods and/or services beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP
§1402.06. Generally, any deleted goods and/or services may not later be reinserted. See TMEP
§1402.07(e).
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.
ATTORNEY INFORMATION
Attorney bar information required. Applicant’s
attorney must provide the following bar information: (1) his or her bar membership number, if the bar provides one; (2) the name of the U.S. state, commonwealth, or
territory of his or her bar membership; and (3) the year of his or her admission to the bar. 37 C.F.R. §2.17(b)(3). This
information is required for all U.S.-licensed attorneys who are representing trademark applicants at the USPTO. Id. If the attorney’s bar does not issue bar membership numbers, applicant must state this for the record. See id.
Attorney attestation required. Applicant’s attorney
must provide the following statement: “I attest that I am an attorney who is an active member in good standing of the bar of the highest court of a U.S. state
(including the District of Columbia and any U.S. Commonwealth or territory).” See 37 C.F.R. §2.17(b)(3). This
is required for all U.S.-licensed attorneys who are representing trademark applicants at the USPTO. Id.
RESPONDING
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.
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
/Midge F. Butler/
Trademark Attorney
Law Office 107
571 272 9137
midge.butler@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.
