To: | Chatam International Incorporated (plewis@jacquins.com) |
Subject: | U.S. Trademark Application Serial No. 88460954 - HEALTHY COLLECTION - 916-013US |
Sent: | March 19, 2020 01:48:45 PM |
Sent As: | ecom114@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88460954
Mark: HEALTHY COLLECTION
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Correspondence Address:
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Applicant: Chatam International Incorporated
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Reference/Docket No. 916-013US
Correspondence Email Address: |
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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: March 19, 2020
This Office Action is in response to applicant’s communication filed on February 26, 2020.
Introduction
In the initial Office Action, dated August 27, 2019, the trademark examining attorney refused registration of the applied-for mark, finding the mark is merely descriptive under Trademark Act Section 2(e)(1).
In applicant’s response, applicant presented arguments against the refusal. For the reasons set forth below, the refusal to register is now made FINAL.
FINAL Trademark Act Section 2(e)(1) Refusal – Merely Descriptive
Registration was previously refused because the applied-for mark merely describes a feature or 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 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)).
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 the present case, applicant’s mark is HEALTHY COLLECTION for “tea” in International Class 030.
In the initial Office Action, examining attorney attached dictionary evidence defining HEALTHY as “beneficial to one's physical, mental, or emotional state : conducive to or associated with good health or reduced risk of disease” and COLLECTION as “a group of things that have been gathered.” See previously attached evidence. When used together, examining attorney found the wording HEALTHY COLLECTION means a group of things that are conductive to, or associated with, good health. Applicant’s tea may be a group of teas that are conducive to, or associated with, good health, or a HEALTHY COLLECTION. See previously attached evidence from Food52, Nutraceutical, and Creative Market showing various groups of foods that are called a HEALTHY COLLECTION. Therefore, this wording merely describes a feature or characteristic of applicant’s goods.
In applicant’s response, applicant argues the mark is not descriptive. First, applicant argues the evidence submitted in the initial Office Action is not relevant because it does not show use of the mark with tea, which are the goods applicant is providing. Additionally, applicant objects to the evidence, arguing that at least one of the third parties is not actually operating in commerce. Second, applicant argues, that it is using COLLECTION to mean that the goods “are selected and presented” and not in the meaning used by the examining attorney.
Examining attorney has carefully considered applicant’s arguments and respectfully disagrees.
First, examining attorney notes that applicant has conceded that the term HEALTHY is descriptive. Additionally, the previously attached evidence shows that HEALTHY is defined as “beneficial to one's physical, mental, or emotional state : conducive to or associated with good health or reduced risk of disease” see previously attached evidence. Applicant’s teas may be beneficial to one’s health, or HEALTHY. Therefore, this wording merely describes a feature or characteristic of applicant’s goods, namely, that they are beneficial to the users’ health, or HEALTHY. See also, attached evidence from Women’s Day, Real Simple, and Mybest, showing a wide variety of third parties using the term HEALTHY to describe teas.
Second, applicant’s argument regarding other meanings of the word COLLECTION is unpersuasive. Descriptiveness is considered in relation to the relevant goods and/or services. DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012). “That a term may have other meanings in different contexts is not controlling.” Robinson v. Hot Grabba Leaf, LLC, 2019 USPQ2d 149089, at *5 (TTAB 2019) (citing In re Canine Caviar Pet Foods, Inc., 126 USPQ2d 1590, 1598 (TTAB 2018)); TMEP §1209.03(e). “It is well settled that so long as any one of the meanings of a term is descriptive, the term may be considered to be merely descriptive.” In re Mueller Sports Med., Inc., 126 USPQ2d 1584, 1590 (TTAB 2018) (quoting In re Chopper Indus., 222 USPQ 258, 259 (TTAB 1984)).
In this case, the previously attached definition of COLLECTION, “a group of things that have been gathered” merely describes a feature of applicant’s teas, because applicant’s teas may be curated, or gathered into a COLLECTION. See also, attached evidence from Tea Forte, Harney and Sons, Art of Tea, and The Republic of Tea demonstrating that it is common for entities providing tea to provide groups of teas described as COLLECTIONS.
Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the goods and/or services 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 non-descriptive meaning in relation to the goods. Specifically, when used together, the combined term HEALTHY COLLECTION, refers to a group of things that are beneficial to one’s health that have been gathered together. Applicant’s teas may be comprised of a group of teas that are beneficial to one’s health that have been gathered into one group, or a HEALTHY COLLECTION. As such, the combined term, HEALTHY COLLECTION merely describes a feature or characteristic of applicant’s goods, namely, that they are a COLLECTION of HEALTHY teas, or a HEALTHY COLLECTION. See attached evidence from Healthy Tea Room, Full Leaf Tea Co, and DavidsTea showing third parties using the term HEALTHY COLLECTION to refer to a grouping of teas with health benefits.
For the reasons discussed above, applicant’s mark is refused registration on the Principal Register under Trademark Act Section 2(e)(1). Although applicant’s mark has been refused registration, applicant may respond to the FINAL refusal by submitting evidence and arguments in support of registration.
Response Guidelines
Please call or email the assigned trademark examining attorney with questions about this Office action. The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are 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 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).
Bechhofer, Yocheved
/Yocheved Bechhofer/
Examining Attorney
Law Office 114
571-272-9329
Yocheved.Bechhofer@uspto.gov
RESPONSE GUIDANCE