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 28, 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
• Identification of Services Requirement
• Clarification of the Number of Classes for Which Registration is Sought Requirement
• Multiple-Class Application Requirements Advisory
• 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 purpose 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. 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)). 

 

Furthermore, 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.

 

In the present case, applicant has applied to register the mark DRYAGER for “Food processor cabinets, namely, equipment to display and control temperature, humidity and moisture contents of foods, namely, nuts, fruits, vegetables and meats and related control panels and displays, sterilization devices, air, temperature and humidity control devices, filters, namely, active carbon filters, shelves, hangars, display podiums, saltwall systems, wall holders, labels, S-hooks, swivel hooks, UVC bulbs and related accessories” in International Class 011.

 

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

 

• Dry: characterized by exhaustion of a supply of liquid.
• Ager: anything that produces the effects of age on another thing.

 

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.” In addition, applicant’s specimen of record indicates that its goods are used for the purpose of “Dry aging” as it reads in pertinent part, the “The longer the beef is hung in the Dryager, Dry Aging Cabinet, the more intensive the flavor becomes.” Accordingly, the wording DRYAGER in the applied-for mark immediately conveys to consumers information about applicant’s goods, namely, that applicant provides food processor cabinets and related accessories for the purpose of aging meats by means of withdrawing moisture.

 

Therefore, the applied-for mark is merely descriptive of the purpose 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.

 

IDENTIFICATION OF GOODS REQUIREMENT

 

The identification of goods is indefinite and must be clarified because it does not sufficiently specify the nature, purpose, and/or field of use of the goods in order to enable proper classification. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend the identification 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 wording “labels, s-hooks, swivel hooks” in the identification of goods for International Class 011 must be clarified because it is too broad and could include goods in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. In particular, this wording could encompass “labels of metal” in International Class 006, “paper labels” in International Class 016, “Plastic labels” in International Class 020, “labels of textile” in International Class 024, “metal S-hooks; metal swivel hooks” in International Class 006, and “non-metal S-hooks; non-metal swivel hooks” in International Class 020.

 

Furthermore, the wording “and related control panels and displays” and “and related accessories” in the identification of goods is indefinite and must be clarified by (1) specifying the common commercial or generic name for these goods, or (2) deleting this wording. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03(a). This wording is an open-ended “catch-all” word or phrase (e.g., “etc.,” “and other similar goods,” “and related goods”) that is not acceptable because it fails to identify specific goods. See TMEP §1402.03(a).

 

In an identification, an applicant must use the common commercial or generic name for the goods, be specific and all-inclusive, and avoid using indefinite words or phrases. TMEP§§1402.01, 1402.03(a). Further, applicant may amend the identification to list only those items that are within the scope of the goods set forth in the initial application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §§1402.06 et seq., 1402.07. Scope is generally determined by the ordinary meaning of the wording in the identification. TMEP §1402.07(a).

 

Applicant may adopt the following wording, if accurate: 

 

International Class 006:          “Labels of metal; metal S-hooks; metal swivel hooks”

 

International Class 009:          “Electronic control panels for controlling temperature, humidity, and moisture content of foods, namely, nuts, fruits, vegetables and meats; electronic numeric displays for displaying temperature, humidity, and moisture content of foods, namely, nuts, fruits, vegetables and meats”

 

International Class 011:          “Food processor cabinets, namely, cabinets used to display and control temperature, humidity, and moisture content of foods, namely, nuts, fruits, vegetables and meats;, sterilization devices, namely, sterilizers not for medical purposes; air temperature control device, namely, air conditioners; humidity control devices, namely, {specify type in International Class 011}; air filtering installations, namely, active carbon filters; refrigerator shelving; UVC light bulbs”

 

International Class 016:          “Paper labels”

 

International Class 020:          “Plastic labels; non-metal S-hooks; non-metal swivel hooks”

 

International Class 024:          “Labels of textile”

 

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 THE NUMBER OF CLASSES FOR WHICH REGISTRATION IS SOUGHT REQUIREMENT

 

The application identifies goods that are classified in at least 6 classes; however, applicant submitted a fee sufficient for only 1 class. In a multiple-class application, a fee for each class is required. 37 C.F.R. §2.86(a)(2), (b)(2); TMEP §§810.01, 1403.01. Therefore, applicant must clarify the number of classes for which registration is sought.

 

Applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.

 

The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class. See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a). See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS ADVISORY

 

The application references goods based on use in commerce in more than one international class; therefore, applicant must satisfy all the requirements below for each international class:

 

(1)        List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).

 

(2)        Submit a filing fee for each international class not covered by the fees already paid (view the USPTO’s current fee schedule).  

 

(3)        Submit verified dates of first use of the mark anywhere and in commerce for each international class. See more information about verified dates of use.

 

(4)        Submit a specimen for each international class.  The current specimen is acceptable for International Class 011; and applicant needs a specimen for International classes 006, 009, 016, 020 and 024. See more information about specimens.

 

            Examples of specimens for goods include tags, labels, instruction manuals, containers, and photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale. Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods.   

 

(5)        Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.” See more information about verification.

 

See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).

 

See an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

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 28, 2019 for

U.S. Trademark Application Serial No. 88488752

 

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 28, 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.”