To: | Edible IP, LLC (trademarks@troutman.com) |
Subject: | U.S. Trademark Application Serial No. 88480402 - EDIBLE - 254971. 0346 |
Sent: | January 16, 2020 02:10:21 PM |
Sent As: | ecom103@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88480402
Mark: EDIBLE
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Correspondence Address: 600 Peachtree St. NE, Suite 3000
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Applicant: Edible IP, LLC
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Reference/Docket No. 254971. 0346
Correspondence Email Address: |
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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: January 16, 2020
This office action is in response to applicant’s communication received on January 16, 2020. Applicant deleted the 1(a) basis and elected to proceed under an Intent to Use (ITU)/1(b) basis with a claim of distinctiveness under Section 2(f) based on applicant’s prior registrations. The 2(f) claim is rejected for the reasons stated below:
CLAIM OF ACQUIRED DISTINCTIVENESS IS REJECTED
An intent-to-use applicant who has used the mark on related goods or services may file a claim of acquired distinctiveness under §2(f) before filing an allegation of use, if the applicant can establish that, as a result of the applicant’s use of the mark on other goods or services, the mark has become distinctive of the goods or services in the intent-to-use application, and that this previously created distinctiveness will transfer to the goods and services in the intent-to-use application when use in commerce begins. In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1347, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001).
However, in this case, the applicant has not presented evidence that the mark has become distinctive of the goods in the instant application, namely, nutritional supplement energy bars and dietary and nutritional supplements. The similarity or relatedness of the goods and/or services in the prior registration(s) and the instant application is not self-evident and therefore applicant’s Section 2(f) claim is not acceptable without additional information. See 37 C.F.R. §2.61(b); TMEP §1212.04(c).
Although an applicant’s ownership of one or more active prior registrations of the same mark may be sufficient for a prima facie showing of acquired distinctiveness, the prior registration(s) must be for sufficiently similar or related goods and/or services such that distinctiveness will transfer to the goods and/or services in the application. See 37 C.F.R. §2.41(a)(1); In re Rogers, 53 USPQ2d 1741, 1744 (TTAB 1999) (citing Levi Strauss & Co. v. Genesco, Inc., 742 F.2d 1401, 1405, 222 USPQ 939, 942 (Fed. Cir. 1984)); TMEP §§1212.04, 1212.04(c).
Therefore, applicant must submit evidence and an explanation as to how the goods and/or services in the claimed active prior registration(s) are similar or related to the goods and/or services in the application such that distinctiveness will transfer to the goods and/or services in the application. See 37 C.F.R. §2.61(b); Bausch & Lomb, Inc. v. Leupold & Stevens, Inc., 6 USPQ2d 1475, 1477-78 (TTAB 1988); TMEP §1212.04(c).
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.
/Gina C. Hayes/
Gina C. Hayes
Examining Attorney
Law Office 103
571-272-9407
gina.hayes@uspto.gov
RESPONSE GUIDANCE