| To: | Currax Pharmaceuticals LLC (aspivak@mosaiclegalgroup.com) |
| Subject: | U.S. Trademark Application Serial No. 88554315 - HAWTHORN - N/A |
| Sent: | November 27, 2019 04:55:00 PM |
| Sent As: | ecom103@uspto.gov |
| Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88554315
Mark: HAWTHORN
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Correspondence Address: 5185 MACARTHUR BOULEVARD, NW, SUITE 350
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Applicant: Currax Pharmaceuticals LLC
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Reference/Docket No. N/A
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: November 27, 2019
This Office action is supplemental to and supersedes the previous Office action issued on October 21, 2019 in connection with this application. Based on information and/or documentation in applicant’s response, the trademark examining attorney now issues the following new refusal: Sections 1, 2, & 45 refusal- mark is generic. Additionally, for the reasons set forth below, applicant’s claim of acquired distinctiveness under Trademark Section 2(f) is insufficient. See TMEP §§706, 711.02.
In a previous Office action dated October 21, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(e)(1) for mere descriptiveness. In addition, applicant was required to provide information regarding the applied-for goods. For the reasons set forth below this refusal and requirement are continued and maintained.
The following is a SUMMARY OF ISSUES that applicant must address:
Applicant must respond to all issues raised in this Office action and the previous October 21, 2019 Office action, within six (6) months of the date of issuance of this Office action. 37 C.F.R. §2.62(a); see TMEP §711.02. If applicant does not respond within this time limit, the application will be abandoned. 37 C.F.R. §2.65(a).
SECTIONS 1, 2, & 45 REFUSAL—APPLIED-FOR MARK IS GENERIC
REFUSAL – APPLIED-FOR MARK IS GENERIC
Registration was initially refused under Trademark Act Section 2(e)(1) because the applied-for mark is merely descriptive of applicant’s goods. 15 U.S.C. §1052(e)(1). Applicant was also advised that the mark appears to be generic as well. In response, applicant amended the application to add a claim of acquired distinctiveness under Section 2(f). 15 U.S.C. §1052(f).
Registration is now refused because the applied-for mark is generic for applicant’s goods. Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051, 1052, 1127; see TMEP §§1209.01(c) et seq., 1209.02(a)(ii). Thus, applicant’s claim of acquired distinctiveness under Section 2(f) is insufficient to overcome the refusal because “generic terms cannot be rescued by proof of distinctiveness or secondary meaning no matter how voluminous the proffered evidence may be.” Royal Crown Co. v. Coca-Cola Co., 892 F.3d 1358, 1365, 127 USPQ2d 1041, 1045 (Fed. Cir. 2018) (quoting In re Northland Aluminum Prods., 777 F.2d 1556, 1558, 227 USPQ2d 961, 962 (Fed. Cir. 1985)); see TMEP §1212.02(i).
“A mark is generic if its primary significance to the relevant public is the class or category of goods or services on or in connection with which it is used.” TMEP §1209.01(c)(i) (citing H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d at 989-90, 228 USPQ at 530; In re ActiveVideo Networks, Inc., 111 USPQ2d 1581, 1600 (TTAB 2014)). Determining whether a mark is generic requires a two-step inquiry:
(1) What is the genus of goods and/or services at issue?
(2) Does the relevant public understand the designation primarily to refer to that genus of goods and/or services?
In re Cordua Rests., Inc., 823 F.3d 594, 599, 118 USPQ2d 1632, 1634 (Fed. Cir. 2016) (citing H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d at 990, 228 USPQ at 530); TMEP §1209.01(c)(i).
Regarding the first part of the inquiry, the genus of the goods and/or services may be defined by an applicant’s identification of goods and/or services. See In re Cordua Rests., Inc., 823 F.3d at 602, 118 USPQ2d at 1636 (citing Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 640, 19 USPQ2d 1551, 1552 (Fed. Cir. 1991)); see also In re 1800Mattress.com IP, LLC, 586 F.3d 1359, 1361, 1363, 92 USPQ2d 1682, 1682, 1684 (Fed. Cir. 2009).
In this case, the application identifies the goods as “Dietary supplements; Dietetic foods adapted for medical purposes,” which adequately defines the genus at issue.
Regarding the second part of the inquiry, the relevant public is the purchasing or consuming public for the identified goods and/or services. Sheetz of Del., Inc. v. Doctor’s Assocs. Inc., 108 USPQ2d 1341, 1351 (TTAB 2013) (citing Magic Wand Inc. v. RDB Inc., 940 F.2d at 640, 19 USPQ2d at 1553). In this case, the relevant public comprises ordinary consumers who purchase applicant’s goods, because there are no restrictions or limitations to the channels of trade or classes of consumers. The evidence attached to the Office action dated October 21, 2019 from www.webmd.com, http://nccih.nih.gov, and www.healthline.com shows that the wording “HAWTHORN” in the applied-for mark is a plant from which medicinal ingredients are extracted. Thus the relevant public would understand this designation to refer primarily to that genus of goods because Hawthorn is used generically on the packaging of dietary supplements containing extracts from the Hawthorn plant.
Please refer to the attached evidence from:
Applicant should note the below grounds for refusal, continued and maintained in the alternative.
REFUSAL IN THE ALTERNATIVE – APPLIED-FOR MARK IS MERELY DESCRIPTIVE
In the alternative, if the applied-for mark is ultimately determined not to be generic by an appellate tribunal, then the refusal of registration based on the applied-for mark being merely descriptive of applicant’s goods is maintained and continued for the reasons specified in the previous Office action. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.
In addition, applicant’s claim of acquired distinctiveness in the response is a concession that the mark sought to be registered is merely descriptive of applicant’s goods. In re Leatherman Tool Grp., Inc., 32 USPQ2d 1443, 1444 (TTAB 1994); see Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 1577, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988).
APPLICANT’S EVIDENCE OF ACQUIRED DISTINCTIVENESS IS INSUFFICIENT
With respect to applicant’s claim of acquired distinctiveness, applicant made the following statement: “The mark has become distinctive of the goods/services through the applicant's substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement.” Add See 37 C.F.R. §2.41.
If the applied-for mark is ultimately determined to be merely descriptive and not generic, the Section 2(f) evidence is insufficient to show acquired distinctiveness because the examining attorney has provided significant evidence showing that applicant’s use of the mark in connection with dietary supplements and dietetic food goods is not exclusive.
The amount and character of evidence needed to establish acquired distinctiveness depends on the facts of each case and particularly on the nature of the mark sought to be registered. Roux Labs., Inc. v. Clairol Inc., 427 F.2d 823, 829, 166 USPQ 34, 39 (C.C.P.A. 1970); In re Chevron Intellectual Prop. Grp. LLC, 96 USPQ2d 2026, 2030 (TTAB 2010); TMEP §1212.01. An applicant’s evidentiary burden of showing acquired distinctiveness increases with the level of descriptiveness of the mark sought to be registered; a more descriptive term requires more evidence. Royal Crown Co. v. Coca-Cola Co., 892 F.3d at 1365, 127 USPQ2d at 1045 (citing In re Steelbuilding.com, 415 F.3d 1293, 1300, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005)).
Applicant should note the below requirement.
REQUEST FOR INFORMATION—INFORMATION ABOUT GOODS REQURIED
In the previously issued Office action, applicant was required to submit additional information about the applied-for goods pursuant to the examining attorney’s request. See 37 C.F.R. §2.61(b); TMEP §814.
Specifically the examining attorney requested that applicant submit factual information about the goods. The examining attorney noted that applicant the statement “In response to the Trademark Examining Attorney's additional request for factual information regarding Applicant's products, Applicant notes that, depending on the specific product, its products generally contain Carbonyl iron, Vitamin C, Vitamin B12, and Folic Acid.”
Additionally, however, applicant was required to respond to the following question:
1) Do applicant’s goods contain any ingredient(s) derived from hawthorn?
See 37 C.F.R. §2.61(b); TMEP §814.
Applicant did not respond to this question.
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. Merely stating that information about the goods or services is available on applicant’s website is an insufficient response and will not make the relevant information of record. See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).
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.
/Michael FitzSimons/
Michael FitzSimons
Trademark Examining Attorney
Law Office 103
(571) 272-0619
michael.fitzsimons@uspto.gov
RESPONSE GUIDANCE
