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 30, 2019

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SUMMARY OF ISSUES:

• Section 2(e)(1) Refusal – Merely Descriptive
• Perfection of Section 44(e) Filing Basis Requirement
• Identification of Goods Requirement
• Clarification of Legal Entity Requirement

 

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).

 

However, applicant must respond to the following refusal and requirements.

 

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

 

Registration is refused because the applied-for mark merely describes the characteristics of applicant’s goods 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. 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)). 

 

Determining the descriptiveness of a mark is done in relation to an applicant’s goods 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 has applied to register the mark DRY AGING BIBLE for “Printed matter; Printed publications; Periodicals; Journals; Newspapers; Books; Newsletters; Leaflets; Pages downloaded from the internet (in paper format); Printed programs; Guides; Tickets; Certificates; Gift vouchers; Catalogues; Photographs; Prints and pictures; Posters; Stickers; Rub down transfers; Calendars; Address books; Scrapbooks; Envelopes; Tag labels; Folders; Binders; Notebooks; Paper; Paperboard; Stationery; Writing instruments; Pens; Pencils; Pen and pencil cases, boxes and holders; Bookmarkers; Bookends; Paperweights; Cards; Greeting cards; Wrapping and packaging materials; Gift wrap and packaging paper; Gift bags and bags for packaging; Gift tags; Table linen of paper; Mats for beer glasses; Paper flags and pennants; Paper banners” in International Class 016.

 

Here, the wording in the mark is defined as follows:

 

• Dry: characterized by exhaustion of a supply of liquid.
• Aging: An artificial process for imparting the characteristics and properties of age.
• Bible: a publication that is preeminent especially in authoritativeness or wide readership.

 

Moreover, the attached evidence from Artofmanliness.com shows that in the meat production industry, “dry-aging” is a process in which “moisture is drawn out of the meat.” Accordingly, the wording DRY AGING in the applied-for mark immediately conveys to consumers information about applicant’s goods, namely, that applicant provides publications for the purpose of artificially imparting the characteristics and properties of age upon meats by means of withdrawing moisture. Similarly, the wording BIBLE in the applied-for mark immediately conveys to consumers information about applicant’s goods, namely, that applicant’s publications are the preeminent authority in the field of dry aging.

 

In re Tower Tech, Inc., 64 USPQ2d 1314, 1317-18 (TTAB 2002) (holding SMARTTOWER merely descriptive of “commercial and industrial cooling towers and accessories therefor, sold as a unit”); In re Sun Microsystems, Inc., 59 USPQ2d 1084, 1087 (TTAB 2001) (holding AGENTBEANS merely descriptive of “computer software for use in the development and deployment of application programs on a global computer network”); In re Putnam Publ’g Co., 39 USPQ2d 2021, 2022 (TTAB 1996) (holding FOOD & BEVERAGE ON-LINE merely descriptive of “a news and information service updated daily for the food processing industry, contained in a database”); In re Copytele, Inc., 31 USPQ2d 1540, 1542 (TTAB 1994) (holding SCREEN FAX PHONE merely descriptive of “facsimile terminals employing electrophoretic displays”).

 

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 do not create a unique, incongruous, or nondescriptive meaning in relation to the goods. Specifically, the composite result of the applied-for mark DRY AGING BIBLE merely describes the characteristics of applicant’s goods, namely, that applicant provides printed publications that are the preeminent authority in the field of “dry aging” or imparting the characteristics and properties of age upon meats by means of withdrawing moisture.

 

Therefore, the applied-for mark is merely descriptive of the characteristics of applicant’s goods. Thus, registration is refused pursuant to Section 2(e)(1) of the Trademark Act.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration. However, if applicant responds to the refusal, applicant must also respond to the requirements set forth below.

 

PERFECTION OF SECTION 44(e) FILING BASIS REQUIREMENT

 

The application specifies Trademark Act Section 44(d) as the sole filing basis. See 15 U.S.C. §1126(d). Although the application does not include a copy of a foreign registration or a statement that applicant intends to rely on Section 44(e) as a basis for registration, the USPTO presumes applicant is asserting Section 44(e) because Section 44(d) is a filing basis only and not a basis for registration. TMEP §§806.01(c), 1003.04(a); see 15 U.S.C. §1126(d)-(e); 37 C.F.R. §2.34(a)(4)(iii). 

 

An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016. In addition, the applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law.  15 U.S.C. §1126(b); TMEP §§1002.01, 1004.

 

Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available. TMEP §1003.04(a). A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin. TMEP §1004.01. If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, the applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin. TMEP §1016. In addition, applicant must also provide an English translation if the foreign registration is not written in English. 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b). The translation should be signed by the translator.  TMEP §1004.01(b).

 

If the foreign registration is not yet available, applicant should inform the trademark examining attorney that the foreign application is still pending and request that the U.S. application be suspended until a copy of the foreign registration is available. TMEP §§716.02(b), 1003.04(a).

 

If applicant cannot satisfy the requirements of the Section 44(e) basis, applicant may amend the basis to Section 1(a) or 1(b), if applicant can satisfy the requirements for the new basis.  See 15 U.S.C. §§1051(a)-(b), 1126(e); TMEP §806.03. Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration. See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.03(h).  

 

IDENTIFICATION OF GOODS REQUIREMENT

 

The wording “Printed matter; Printed publications; Periodicals; Journals; Books; Newsletters; Leaflets; Pages downloaded from the internet (in paper format); Printed programs; Guides; Tickets; Certificates; Gift vouchers; Catalogues; Tag labels; bags for packaging; Gift tags” in the identification of goods is indefinite and must be clarified because it does not sufficiently specify the nature and/or field of use of the goods identified in order to enable proper classification. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend this wording to specify the common commercial or generic name of the goods. See TMEP §1402.01. If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses. See id.

 

The identification of goods contains parentheses. Generally, applicants should not use parentheses and brackets in identifications in their applications so as to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate goods that have been deleted from registrations or in an affidavit of incontestability to indicate goods not claimed. See TMEP §1402.12. The only exception is that parenthetical information is permitted in identifications in an application if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity or scope of the identification, e.g., “fried tofu pieces (abura-age).” Id.

 

Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the description of the goods.

 

Applicant may substitute the following wording, if accurate:

 

International Class 016:          “Printed matter, namely, paper signs, books, manuals, curricula, newsletters, informational cards, and brochures in the field of {indicate subject matter}; Printed publications, namely, brochures, booklets, and teaching materials in the field of {indicate subject matter or field of printed publications and teaching materials}; Printed periodicals in the field of {indicate subject matter}; Blank journals; Newspapers; Books in the field of {indicate topic or field}; Newsletters in the field of {indicate subject matter}; Leaflets about {indicate subject matter}{NOTE: advertising leaflets are not goods in trade]; Printed pages downloaded from the internet, namely, {specify type in International Class 016, e.g., scrapbook pages, photograph album pages, archival storage pages, etc.}; Printed event programs; Printed guides for {specify area of use or subject matter}; Printed tickets; Printed certificates; Printed gift vouchers; Catalogues in the field of {indicate specific field of use}; Photographs; Prints and pictures; Posters; Stickers; Rub down transfers; Calendars; Address books; Scrapbooks; Envelopes; Paper tag labels; Folders; Binders; Notebooks; Paper; Paperboard; Stationery; Writing instruments; Pens; Pencils; Pen and pencil cases, boxes and holders; Bookmarkers; Bookends; Paperweights; Cards, namely, {specify type in International Class 016, e.g., blank cards, trivia cards, note cards, etc.}; Greeting cards; Plastic film for use as wrapping and packaging materials for {indicate area of use or industry or indicate for general use}; Gift wrap and packaging paper; Gift bags and plastic or paper bags for packaging; Paper gift tags; Table linen of paper; Table mats of cardboard for beer glasses; Paper flags and pennants; Paper banners”

 

Applicant may amend the identification to clarify or limit the goods, but not to broaden or expand the goods 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 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.

 

CLARIFICATION OF LEGAL ENTITY REQUIREMENT

 

Applicant’s business name includes the foreign business designation “GmbH & Co. KG”; however, applicant set forth “Limited Liability Company” as the legal entity in the application. This business designation is generally considered the equivalent of a “Limited partnership.” See TMEP app. D.  Therefore, applicant must clarify the entity type in the application. See 37 C.F.R. §§2.32(a)(3), 2.61(b); TMEP §803.03(i). Applicant may satisfy this requirement by amending the legal entity to one of those immediately listed above from Appendix D of the Trademark Manual of Examining Procedure (TMEP) for this business designation, as appropriate. See TMEP §803.03(i). 

 

Alternatively, if applicant maintains that the legal entity in the application properly identifies applicant’s entity type, applicant must provide an explanation as to why the identified entity type is more similar to a “Limited liability company” in this instance than to the legal entities listed in TMEP Appendix D. See id.

 

If, in response to the above request, applicant provides information indicating that it is not the owner of the mark, registration will be refused because the application was void as filed. See 37 C.F.R. §2.71(d); TMEP §§803.06, 1201.02(b). An application must be filed by the party who owns or is entitled to use the mark as of the application filing date. See 37 C.F.R. §2.71(d); TMEP §1201.02(b).

 

 

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. 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  

 

 

/Obieze Mmeje/

Examining Attorney

Law Office 122

(571) 272-7694

Obieze.Mmeje@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 30, 2019 for

U.S. Trademark Application Serial No. 88480642

 

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. 

 

 

/Obieze Mmeje/

Examining Attorney

Law Office 122

(571) 272-7694

Obieze.Mmeje@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 30, 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.”