To: | ATM METABOLICS, LLC (info@conceptlaw.com) |
Subject: | U.S. Trademark Application Serial No. 88498209 - ENDFLAMMATION - ATM_END_TM1 |
Sent: | September 21, 2019 09:19:00 AM |
Sent As: | ecom117@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88498209
Mark: ENDFLAMMATION
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Correspondence Address: 6400 NORTH ANDREWS AVENUE, SUITE 500
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Applicant: ATM METABOLICS, LLC
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Reference/Docket No. ATM_END_TM1
Correspondence Email Address: |
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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 21, 2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue 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).
SECTION 2(e)(1) REFUSAL – MERELY DESCRIPTIVE
Applicant has applied to register the mark “ENDFLAMMATION” for “dietary and nutritional supplements” in Class 5.
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)).
Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the goods 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, consumers who encounter the applied-for mark in connection with the goods will understand the purpose or function of the goods to be to bring a localized protective reaction of tissue, characterized by pain, redness, swelling, to a conclusion.
The applied-for mark, “ENDFLAMMATION”, is a telescoped mark consisting of the wording “END” and “INFLAMMATION”. A “telescoped mark,” which consists of two or more words combined to create a single word that shares letters, is merely descriptive or generic if the individual words are descriptive or generic and if the words retain their descriptive or generic meaning within the telescoped mark. See In re Omaha Nat’l Corp., 819 F.2d 1117, 1118, 2 USPQ2d 1859, 1860 (Fed. Cir. 1987) (holding FIRSTIER merely descriptive of banking services); In re Greenliant Sys. Ltd., 97 USPQ2d 1078, 1083 (TTAB 2010) (holding NANDRIVE, a telescoped mark of the generic term “nand drive,” generic for electronic integrated circuits, including flash memory drives); TMEP §§1209.01(c)(i), 1209.03(d).
The attached definition from The American Heritage Dictionary shows “END” means “a result; outcome” or “to bring to a conclusion”. The attached definition from The American Heritage Dictionary shows “INFLAMMATION” means “the state of being inflamed” or “a localized protective reaction of tissue to irritation, injury, or infection, characterized by pain, redness, swelling”. Therefore the telescoped term “ENDFLAMMATION” would be understood to mean “to bring a localized protective reaction of tissue, characterized by pain, redness, swelling, to a conclusion.”
The attached screenshots show that dietary and nutritional supplements are commonly used to reduce the effects of inflammation. Therefore “ENDFLAMMATION” merely describes the purpose or function of applicant’s goods because dietary and nutritional supplements are commonly used to bring a localized protective reaction of tissue, characterized by pain, redness, swelling, to a conclusion.
As a result, “ENDFLAMMATION” is merely descriptive of the purpose or function of applicant’s goods, and therefore registration must be refused on the Principal Register under Section 2(e)(1) of the Trademark Act.
SUPPLEMENTAL REGISTER ADVISORY
If applicant files an acceptable allegation of use and also amends to the Supplemental Register, the application effective filing date will be the date applicant met the minimum filing requirements under 37 C.F.R. §2.76(c) for an amendment to allege use. TMEP §§816.02, 1102.03; see 37 C.F.R. §2.75(b). In addition, the undersigned trademark examining attorney will conduct a new search of the USPTO records for conflicting marks based on the later application filing date. TMEP §§206.01, 1102.03.
CLAIM OF ACQUIRED DISTINCTIVENESS UNDER SECTION 2(f)
An intent-to-use applicant who has used the same mark on related goods and/or services may assert a claim of acquired distinctiveness under Trademark Act Section 2(f) before filing an allegation of use, if applicant can establish that, as a result of applicant’s use of the same mark on other goods and/or services, the mark has become distinctive of the goods and/or services in the intent-to-use application, and that this previously created distinctiveness will transfer to the goods and/or 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); In re Binion, 93 USPQ2d 1531, 1538 (TTAB 2009); TMEP §1212.09(a).
The Trademark Trial and Appeal Board has set forth the following two requirements for showing that a mark in an intent-to-use application has acquired distinctiveness:
(1) Applicant must establish that the same mark has acquired distinctiveness as to the other goods and/or services, by submitting evidence such as ownership of an active prior registration for the same mark for sufficiently similar or related goods and/or services, a prima facie showing of acquired distinctiveness based on five years’ use of the same mark with related goods and/or services, or actual evidence of acquired distinctiveness for the same mark with respect to the other goods and/or services; and
(2) Applicant must show sufficient relatedness of the goods and/or services in the intent-to-use application and those for which the mark has acquired distinctiveness to warrant the conclusion that the previously created distinctiveness will transfer to the goods and/or services in the application upon use. The showing necessary to establish relatedness will be decided on a case-by-case basis and will depend upon the nature of the goods and/or services involved and the language used to identify them in the application.
TMEP §1212.09(a); see Kellogg Co. v. Gen. Mills Inc., 82 USPQ2d 1766, 1770-71 (TTAB 2007); In re Rogers, 53 USPQ2d 1741, 1744-45 (TTAB 1999).
RESPONSE GUIDELINES
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
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
Sagar Vengurlekar
/Sagar Vengurlekar/
Trademark Examining Attorney
Law Office 117
Phone: (571) 272-5396
Sagar.Vengurlekar@uspto.gov
RESPONSE GUIDANCE