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:  September 09, 2019

 

 

The referenced application and the preliminary amendment dated July 11, 2019 have been reviewed by the assigned trademark examining attorney.  The amendment to the ownership information set forth in the preliminary amendment is accepted.  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.

 

 

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(e)(1) Refusal – Merely Descriptive
• Mark on the Drawing and Specimen Differ

 

 

SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE

 

Registration is refused because the applied-for mark merely describes a feature of applicant’s services.  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)). 

 

The applicant has applied to register the mark PSYCHEDELIC SCIENCE for “Educational services, namely, conducting conferences and workshops in the field of psychotherapy, mental health care, psychotherapeutic therapies, plant medicine, clinical research, psychological research, medical research, scientific research, pharmaceutical research, psychedelic therapies and distribution of course material in connection therewith; Providing a website featuring non-downloadable videos in the field of psychotherapy, mental health care, psychotherapeutic therapies, plant medicine, clinical research, psychological research, medical research, scientific research, pharmaceutical research, psychedelic therapies” in International Class 41.

 

Generally, if the individual components of a mark retain their descriptive meaning in relation to the goods and/or services, 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., Apollo Med. Extrusion Techs., Inc. v. Med. Extrusion Techs., Inc., 123 USPQ2d 1844, 1851 (TTAB 2017) (holding MEDICAL EXTRUSION TECHNOLOGIES merely descriptive of medical extrusion goods produced by employing medical extrusion technologies); In re Cannon Safe, Inc., 116 USPQ2d 1348, 1351 (TTAB 2015) (holding SMART SERIES merely descriptive of metal gun safes); In re King Koil Licensing Co., 79 USPQ2d 1048, 1052 (TTAB 2006) (holding THE BREATHABLE MATTRESS merely descriptive of beds, mattresses, box springs, and pillows). 

 

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/or services and do not create a unique, incongruous, or nondescriptive meaning in relation to the goods and/or services. 

 

The attached dictionary evidence from www.merriam-webster.com and www.collinsdictionary.com indicate the terms in applicant’s mark are defined as follows:

 

PSYCHEDELIC:  “of, relating to, or being drugs (such as LSD) capable of producing abnormal psychic effects (such as hallucinations) and sometimes psychotic states”

 

SCIENCE:  “systematized knowledge derived from observation, study, and experimentation carried on in order to determine the nature or principles of what is being studied”

 

Individually these terms describe a feature of applicant’s services, and the composite result does not create a nondescriptive meaning in relation to the services.  Consumers who encounter applicant’s mark will immediately presume that the mark is for educational services relating to the systematized knowledge derived from observation, study, and experimentation carried in order to determine the nature or principles of drugs (such as LSD) capable of producing abnormal psychic effects (such as hallucinations) and sometimes psychotic states.

 

Applicant’s specimen of record also demonstrates that PSYCHEDELIC SCIENCE is merely descriptive of the applied-for services.  Specifically, the first page of the specimen reads:

 

At Psychedelic Science 2017, scientists, doctors, therapists, students, educators, policymakers, artists, and others from around the world will come together to share and discover recently completed and ongoing research into the risks and benefits of psychedelics and medical marijuana for science, medicine, spirituality, creativity, and more. (emphasis added)

 

Further, the attached evidence from http://portlandpsychedilcsociety.org, www.ciis.edu, and http://psychedemia.org shows third-party descriptive usage of the words “psychedelic(s)” and/or “science” to describe services similar to applicant’s.  Websites and webpages, as well as Applicant’s specimen(s) and any explanatory text therein, are generally a competent source for determining how the public perceives the mark in connection with applicant’s goods and/or services.  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).

 

Accordingly, the mark PSYCHEDELIC SCIENCE is merely descriptive of a feature of applicant’s services, and registration is properly 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.

 

Applicant should note the following additional ground for refusal.

 

 

MARK ON THE DRAWING AND SPECIMEN DIFFER

 

Registration is refused because the specimen does not show the mark in the drawing in use in commerce in International Class(es) 41, which is required in the application or amendment to allege use.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a), 1301.04(g)(i).  The mark appearing on the specimen and in the drawing must match; that is, the mark in the drawing “must be a substantially exact representation of the mark” on the specimen.  See 37 C.F.R. §2.51(a)-(b); TMEP §807.12(a). 

 

In this case, the specimen displays the mark as PSYCHEDELIC SCIENCE.  However, the drawing displays the mark as PSYCHEDELIC SCIENCE 2017 and PSYCHEDELIC SCIENCE 2013.  The mark on the specimen does not match the mark in the drawing because the mark on the specimen includes numbers, while the mark in the drawing does not.  Applicant has thus failed to provide the required evidence of use of the mark in commerce.  See TMEP §807.12(a).

 

Applicant may respond to this refusal by satisfying one of the following:

 

(1)       Submit a new drawing of the mark that shows the mark on the specimen and, if appropriate, an amendment of the description and/or color claim that agrees with the new drawing.  See 37 C.F.R. §2.72(a)-(b).  Applicant may amend the mark in the drawing to match the mark on the specimen but may not make any other changes or amendments that would materially alter the drawing of the mark.  See 37 C.F.R. §2.72(a)-(b); TMEP §807.14.

 

(2)       Submit a different specimen (a verified “substitute” specimen) for each applicable international class that (a) shows the mark in the drawing in actual use in commerce for the goods and/or services in the application or amendment to allege use, and (b) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use.

 

Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and webpages that show the mark used in the actual sale, rendering, or advertising of the services.  See TMEP §1301.04(a), (h)(iv)(C).

 

For more information about drawings and instructions on how to satisfy these response options online using the Trademark Electronic Application System (TEAS) form, see the Drawing webpage.

 

 

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(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  

 

 

Chioma (Bata) Oputa

Examining Attorney

Law Office 103

571-272-5234

chioma.oputa@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 September 09, 2019 for

U.S. Trademark Application Serial No. 88468908

 

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. 

 

 

Chioma (Bata) Oputa

Examining Attorney

Law Office 103

571-272-5234

chioma.oputa@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 September 09, 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.”