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:  March 16, 2020

 

 

This Office action is in response to applicant’s communication filed on February 13^th, 2020.

 

In a previous Office action(s) dated August 13^th, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following:  Trademark Act Section 2(e)1 for a merely descriptive mark and failure to function as mark due to informational wording.

 

The refusals under Trademark Act Section 2(e)1 for a merely descriptive mark and Trademark Act Section 1,23, and 45 for failure to function as mark due to informational wording are continued and maintained.  Please see further reasoning below. 

 

Based on the applicant’s response please see the new requirement below.

 

FAILURE TO FUNCTION

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The applicant contends that the mark can function because it is not merely informational.  However the trademark examining attorney respectfully disagrees with this assertion. 

 

It is common practice in the hookah tobacco industry to market and sell their tobacco products by identifying it by a flavor.  Companies such as the applicant create different flavors of their tobacco products and markets them to consumers by the flavor of hookah tobacco.  The attached evidence from the applicant’s website shows that the applicant even identifies the different types of tobacco by the flavor. 

 

In addition, the attached evidence shows evidence from other internet sources which describes Mandarin Zest as a flavor.  In particular the retailer Amoretti sells a MANDARIN ZEST extract which shows that MANDARIN ZEST is perceived and used as a flavor.  Therefore as it relates to the applicant’s goods, the term MANDARIN ZEST would be considered by consumers to be informational wording as it identifies a flavor of the product. 

 

Therefore the failure to function refusal is continued and maintained.

 

MERELY DESCRIPTIVE REFUSAL

 

The applicant contends that the evidence provided was unreliable.  However, for purposes of evaluating a trademark, material obtained from the Internet is generally accepted as competent evidence.  See In re Bayer Aktiengesellschaft, 488 F.3d 960, 966, 82 USPQ2d 1828, 1833 (Fed. Cir. 2007); In re Reed Elsevier Props., Inc., 482 F.3d 1376, 1380, 82 USPQ2d 1378, 1381 (Fed. Cir. 2007); TBMP §1208.03; TMEP §710.01(b).  The evidence provided from blogs and articles showed how the term MANDARIN ZEST is perceived to be a flavor of hookah tobacco.

 

The applicant also states that the mark is suggestive, however the trademark examining attorney respectfully disagrees.   Here there is no imagination required to understand the nature of the applicant’s products.  A mark is suggestive if some imagination, thought, or perception is needed to understand the nature of the goods and/or services described in the mark; whereas a descriptive term immediately and directly conveys some information about the goods and/or services.  See Stoncor Grp., Inc. v. Specialty Coatings, Inc., 759 F.3d 1327, 1332, 111 USPQ2d 1649, 1652 (Fed. Cir. 2014) (citing DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251-52, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012)); TMEP §1209.01(a).  In this case, a consumer of the applicant’s goods would immediately know the term MANDARIN ZEST is describing the flavor of the goods.  When encountering the mark especially given how it is presented on the applicant’s website, there is no multi-stage reasoning that a consumer would have as the applicant suggests. It is clear from the applicant’s website that MANDARIN ZEST is the flavor of the tobacco.  This evidence proves that the mark is describing the flavor of the goods.    Further, additional evidence was attached to show other Hookah retailers who also refer to MANDARIN ZEST as a flavor of tobacco.   This evidence shows that companies the public would perceive MANDARIN ZEST as describing the flavor of the tobacco and not a source indicator.

 

Therefore the merely descriptive refusal is continued and maintained.

 

INFORMATION ABOUT GOODS REQUIRED

 

Due to the descriptive nature of the applied-for mark, applicant must provide the following information and documentation regarding the goods and/or services and wording appearing in the mark: 

 

(1)        Fact sheets, instruction manuals, brochures, advertisements and pertinent screenshots of applicant’s website as it relates to the goods and/or services in the application, including any materials using the terms in the applied-for mark.  Merely stating that information about the goods and/or services is available on applicant’s website is insufficient to make the information of record.; 

 

(2)        If these materials are unavailable, applicant should submit similar documentation for goods and services of the same type, explaining how its own product or services will differ.  If the goods and/or services feature new technology and information regarding competing goods and/or services is not available, applicant must provide a detailed factual description of the goods and/or services.  Factual information about the goods must make clear how they operate, salient features, and prospective customers and channels of trade.  For services, the factual information must make clear what the services are and how they are rendered, salient features, and prospective customers and channels of trade.  Conclusory statements will not satisfy this requirement.; and

 

(3)        Applicant must respond to the following questions: 

a.       How does the mark appear on the packaging for the goods?

b.      How are the different types of tobacco differentiated?  Are the sold by flavor or some other factor?

c.       Does MANDARIN ZEST serve as an ingredient for the goods?

d.      Is MANDARIN ZEST an ingredient in the flavor that are used in the goods? 

e.       Do competitors use MANDARIN ZEST to describe the flavor of similar goods? 

f.        How do retailers that sell the applicant’s goods market, advertise and/or offer the applicant’s MANDARIN ZEST tobacco?

 

See 37 C.F.R. §2.61(b); TMEP §§814, 1402.01(e). 

 

Failure to comply with a request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814. 

 

ASSISTANCE

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

 

 

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

 

Lewis, Lakeisha M.

/Lakeisha S.  Munn Lewis/

Trademark Examining Attorney

Law Office 105

(571)272-1910

Lakeisha.Lewis@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 March 16, 2020 for

U.S. Trademark Application Serial No. 88502712

 

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. 

 

 

Lewis, Lakeisha M.

/Lakeisha S.  Munn Lewis/

Trademark Examining Attorney

Law Office 105

(571)272-1910

Lakeisha.Lewis@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 March 16, 2020, 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.”