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:  November 04, 2019

 

 

Introduction:

 

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.

 

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).

 

Summary of Issues:

 

• Sections 1 and 45 Partial Refusal – Specimen Unacceptable;
• Identification of Goods and/or Services – Amendment Required; and
• Disclaimer Required.

 

Sections 1 and 45 Partial Refusal – Specimen Unacceptable:

 

THIS PARTIAL REFUSAL APPLIES TO CLASS 005 ONLY

 

Registration is refused because the webpage specimen in International Class 005 is not an acceptable display associated with the goods and appears to be mere advertising material.  See TMEP §904.07(a).  The specimen, thus, fails to show the applied-for mark in use in commerce.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §2.56(a). 

 

To be acceptable, a specimen of a webpage display must include (1) a picture or sufficient textual description of applicant’s goods that (2) shows the mark associated with the goods, and (3) a way of ordering the goods (e.g., a “shop online” or “shopping cart” button or link, an order form, or a telephone number for placing orders).  TMEP §904.03(i); see In re Sones, 590 F.3d 1282, 1286-89, 93 USPQ2d 1118, 1122-24 (Fed. Cir. 2009); In re Azteca Sys., Inc., 102 USPQ2d 1955, 1957-58 (TTAB 2012).  If applicant’s specimen includes a telephone number, internet address, and/or mailing address that appears only with corporate contact information, the specimen may not show sufficient means for ordering the goods.  See In re Genitope Corp., 78 USPQ2d 1819, 1822 (TTAB 2006); TMEP §904.03(i)(C)(2).  In that circumstance, the specimen may also need to include instructions on how to place an order or an offer to accept orders.  See In re Quantum Foods, Inc., 94 USPQ2d 1375, 1379 (TTAB 2010); TMEP §904.03(i)(C)(2).

 

In this case, the specimen does not include a way of ordering the goods in that the specimens show the goods but have buttons and links to set up appointments. See In re Sones, 590 F.3d at 1286-89, 93 USPQ2d at 1122-24; In re Azteca Sys., Inc., 102 USPQ2d at 1957; TMEP §§904.03(i) et seq.  Without this feature, the specimen is mere advertising material, which is generally not acceptable as a specimen for showing use in commerce for goods.  See In re Kohr Bros., 121 USPQ2d 1793, 1794 (TTAB 2017) (quoting In re Quantum Foods, Inc., 94 USPQ2d at 1379); In re Genitope Corp., 78 USPQ2d at 1822; TMEP §904.04(b).  It is further unclear if the applicant is selling the goods or just the services that include picking specific nutritional supplements to use during the provision of services to customers. 

 

An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods identified in the application or amendment to allege use.  15 U.S.C. §1051(a)(1); 37 C.F.R. §2.56(a). 

 

Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, and displays associated with the actual goods at their point of sale.  See TMEP §§904.03 et seq.  As stated above, webpage displays 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.  TMEP §904.03(i).

 

Applicant may respond to this refusal by satisfying one of the following for each applicable international class:

 

(1)        Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the goods identified in the application or amendment to allege use.  A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20:  “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.”  The substitute specimen cannot be accepted without this statement.

 

(2)        Amend the filing basis to intent to use under Section 1(b), for which no specimen is required.  This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.

 

For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to the Specimen webpage. 

 

Although applicant’s mark has been partially 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 and/or Services – Amendment Required:

 

The wording listed below from the identification of goods and/or services is indefinite and must be clarified for the reasons stated.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

International Class 005: Applicant has included the term “and/or” or “or” in the identification of goods for “Dietary and nutritional supplements for reducing the likelihood of, and/or promote recovery from, physiological side effects relating to the consumption of alcoholic beverages” in International Class 005.  However, this term is generally not accepted in identifications when (1) it is unclear whether applicant is using the mark, or intends to use the mark, on all the identified goods; (2) the nature of the goods is unclear; or (3) classification cannot be determined from such wording.  See TMEP §1402.03(a).  In this case, the nature of the goods is unclear.

 

An application must specify, in an explicit manner, the particular goods on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce.  See 15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Therefore, applicant should replace “and/or” or “or” with “and” in the identification of goods, if appropriate, or rewrite the identification with the “and/or” or “or” deleted and the goods specified using definite and unambiguous language. Applicant may adopt the suggestions below, if accurate. 

 

International Class 044: The wording “Health care services, namely, including treatment for dehydration, inflammation, nausea and headache; Medical services, namely, providing in-patient, out-patient, in-room and mobile treatment including providing oxygen therapy, holistic therapy, vitamin therapy, hydration therapy, anti-inflammatory therapy, nutritional therapy, intravenous medical treatments, and treatments that promote recovery from the discomfort and unpleasant physiological side effects relating to the consumption of alcoholic beverages” in the identification of goods is indefinite and must be deleted and replaced with a definite term, such as “namely,” “consisting of,” “particularly,” or “in particular.”  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03(a).  The identification must be specific and all-inclusive.  This wording is an open-ended term (e.g., “including,” “such as”) that is not acceptable because it fails to identify specific goods.  See TMEP §1402.03(a).  Applicant may adopt the suggestions below, if accurate.

 

Applicant has included the term “and/or” or “or” in the identification of services for “Medical services, namely, the provision and administration of medicines, vitamins, nutritional and dietary supplements which reduce the likelihood of and/or promote recovery from, the discomfort and unpleasant physiological side effects relating to the consumption of alcoholic beverages, including intravenous treatments” in International Class 044. As discussed above, this term is generally not accepted in identifications when (1) it is unclear whether applicant is using the mark, or intends to use the mark, on all the identified services; (2) the nature of the services is unclear; or (3) classification cannot be determined from such wording.  See TMEP §1402.03(a).  In this case, the nature of the services is unclear. Applicant may adopt the suggestions below, if accurate.

 

To address the above issues, applicant may adopt any or all of the following identifications, with the necessary information added, if accurate (proposed deletions shown in strikethrough):

 

International Class 005: Nutritional supplements; Nutritional supplements for which increase energy and stamina; Dietary and nutritional supplements; Dietary and nutritional supplements for reducing the likelihood of, and/or promote recovery from, physiological side effects relating to the consumption of alcoholic beverages; Herbal supplements; Liquid nutritional supplement; Mineral supplements; Vitamin supplements

 

International Class 044: Health care services, namely, including treatment for dehydration, inflammation, nausea and headache; Medical services; Medical services, namely, providing in-patient, out-patient, in-room and mobile treatment including providing oxygen therapy, holistic therapy, vitamin therapy, hydration therapy, anti-inflammatory therapy, nutritional therapy, intravenous medical treatments, and treatments that promote recovery from the discomfort and unpleasant physiological side effects relating to the consumption of alcoholic beverages; Medical services, namely, the provision and administration of medicines, vitamins, nutritional and dietary supplements which reduce the likelihood of and/or promote recovery from, the discomfort and unpleasant physiological side effects relating to the consumption of alcoholic beverages, including intravenous treatments; Medical treatment of the physiological side effects relating to the consumption of alcoholic beverages; Oxygen bar services; Providing medical information, consultancy and advisory services

 

Applicant may amend the identification to clarify or limit the services, but not to broaden or expand the services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted services may not later be reinserted.  See TMEP §1402.07(e).

 

For assistance with identifying and classifying services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

Disclaimer Required:

 

Applicant must provide a disclaimer of the unregistrable part of the applied-for mark even though the mark as a whole appears to be registrable.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).  A disclaimer of an unregistrable part of a mark will not affect the mark’s appearance.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).

 

In this case, applicant must disclaim the wording “HANGOVER” because it is not inherently distinctive.  This unregistrable term at best is merely descriptive of a characteristic, function, feature, or purpose of applicant’s goods and/or services.  See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a). 

 

The attached evidence from The American Heritage Dictionary of the English Language shows this wording means “temporary, unpleasant physical condition, typically characterized by headache and nausea, following the consumption of an excessive amount of alcohol”. See attached dictionary evidence. Thus, the wording merely describes applicant’s goods and/or services, i.e., applicant’s goods and services to reduce the likelihood and promote recovery of the side effects relating to the consumption of and excessive amount of alcohol.

 

In addition, the term “HANGOVER” is encompassed in applicant’s identification of goods and services: “Dietary and nutritional supplements for reducing the likelihood of, and/or promote recovery from, physiological side effects relating to the consumption of alcoholic beverages” and “Medical services, namely, providing in-patient, out-patient, in-room and mobile treatment including providing oxygen therapy, holistic therapy, vitamin therapy, hydration therapy, anti-inflammatory therapy, nutritional therapy, intravenous medical treatments, and treatments that promote recovery from the discomfort and unpleasant physiological side effects relating to the consumption of alcoholic beverages; Medical services, namely, the provision and administration of medicines, vitamins, nutritional and dietary supplements which reduce the likelihood of and/or promote recovery from, the discomfort and unpleasant physiological side effects relating to the consumption of alcoholic beverages, including intravenous treatments; Medical treatment of the physiological side effects relating to the consumption of alcoholic beverages” (emphasis added). See application of record. By encompassing this term in the identification of goods and services, the applicant has recognized that this term is generally understood by the average consumers in the United States as describing these goods and services, e.g., applicant’s goods and services for avoiding and relieving hangover symptoms. See TMEP §1402.01.

 

Applicant may respond to this issue by submitting a disclaimer in the following format: 

 

No claim is made to the exclusive right to use “HANGOVER” apart from the mark as shown. 

 

For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage. 

 

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.

 

Assistance or Response Options:

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

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  

 

 

/Anna Oakes/

Anna J. Oakes

Examining Attorney

Law Office 103

(571) 272-2569

aoakes1@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 November 04, 2019 for

U.S. Trademark Application Serial No. 88556731

 

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. 

 

 

/Anna Oakes/

Anna J. Oakes

Examining Attorney

Law Office 103

(571) 272-2569

aoakes1@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 November 04, 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.”