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 11, 2019

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) 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:

• Mark is merely descriptive – class 3
• Identification of goods

 

SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE – class 3

Applicant’s applied-for mark is “RAINSCENT” for “non-medicated cosmetics; non-medicated body and beauty care preparations; non- medicated toiletry preparations; cosmetic preparations for body care; bath soaps; cosmetic soaps; preparations for baths, not for medical purposes; bath and shower gels, not for medical purposes; antiperspirants; non-medicated dentifrices; cosmetic preparations for the care of mouth and teeth; perfumery; perfume; fragrances; oils for perfumes and scents; essential oils; perfumed extracts for perfumes; essences for cosmetic purposes; hair care preparations; cleaning agents for cleaning surfaces; air fragrancing preparations” in International Class 3.

 

Registration is refused because the applied-for mark merely describes a feature of applicant’s goods and/or services.  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 immediately conveys information concerning a feature, quality, or characteristic of [an applicant’s] goods or services.”  In re N.C. Lottery, 866 F.3d 1363, 1367, 123 USPQ2d 1707, 1709 (Fed. Cir. 2017) (citing In re Bayer Aktiengesellschaft, 488 F.3d 960, 963, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)); TMEP §1209.01(b); see DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (quoting In re Abcor Dev. Corp., 588 F.2d 811, 814, 200 USPQ 215, 218 (C.C.P.A. 1978)). 

 

The determination of whether a mark is merely descriptive is made in relation to an applicant’s goods and/or services, not in the abstract.  DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012); In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); TMEP §1209.01(b); see, e.g., In re Polo Int’l Inc., 51 USPQ2d 1061, 1062-63 (TTAB 1999) (finding DOC in DOC-CONTROL would refer to the “documents” managed by applicant’s software rather than the term “doctor” shown in a dictionary definition); In re Digital Research Inc., 4 USPQ2d 1242, 1243-44 (TTAB 1987) (finding CONCURRENT PC-DOS and CONCURRENT DOS merely descriptive of “computer programs recorded on disk” where the relevant trade used the denomination “concurrent” as a descriptor of a particular type of operating system). 

 

“Whether consumers could guess what the product [or service] is from consideration of the mark alone is not the test.”  In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).

 

Generally, if the individual components of a mark retain their descriptive meaning in relation to the goods and/or services, the combination results in a composite mark that is itself descriptive and not registrable.  In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1516 (TTAB 2016) (citing In re Tower Tech, Inc., 64 USPQ2d 1314, 1317-18 (TTAB (2002)); TMEP §1209.03(d); see, e.g., Apollo Med. Extrusion Techs., Inc. v. Med. Extrusion Techs., Inc., 123 USPQ2d 1844, 1851 (TTAB 2017) (holding MEDICAL EXTRUSION TECHNOLOGIES merely descriptive of medical extrusion goods produced by employing medical extrusion technologies); In re Cannon Safe, Inc., 116 USPQ2d 1348, 1351 (TTAB 2015) (holding SMART SERIES merely descriptive of metal gun safes); In re King Koil Licensing Co., 79 USPQ2d 1048, 1052 (TTAB 2006) (holding THE BREATHABLE MATTRESS merely descriptive of beds, mattresses, box springs, and pillows). 

 

Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the goods and/or services 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/or services and do not create a unique, incongruous, or nondescriptive meaning in relation to the goods and/or services.  Specifically, the mark is a composite of the terms “rain” meaning “water that falls in drops from clouds in the sky” and “scent” meaning “a particular smell, especially a pleasant one”. See attached definitions below:

 

• http://www.macmillandictionary.com/dictionary/american/rain_1#rain_4
• http://www.macmillandictionary.com/dictionary/american/scent_1#scent_4

 

Therefore the individual terms merely describe a feature of applicant’s goods by merely describing what applicant’s goods smell like in that applicant’s goods feature a particular smell, especially a pleasant one that smells like water that falls in drops from clouds in the sky.

 

Further, the composite is commonly used in the cosmetic industry to describe that their products smell like rain. See attached evidence below:

 

• http://demeterfragrance.com/rain.html
• http://www.ulta.com/rain-eau-de-parfum?productId=xlsImpprod6481286&sku=2273790&cmpid=PS_Non!google!Product_Listing_Ads&cagpspn=pla&CATCI=pla-377756098067&CAAGID=17964625110&CAWELAID=330000200000121473&CATARGETID=330000200001281331&cadevice=c&gclid=EAIaIQobChMIr-6UrMLY5QIVjaiaCh0ELgz5EAQYAiABEgJicfD_BwE
• http://www.fragrancex.com/products/_cid_perfume-am-lid_l-am-pid_65542w__products.html

 

Based on the evidence and analysis above, applicant’s applied-for mark is merely descriptive and must be refused under Section 2(e)(1) of the Latham Act.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

IDENTIFICATION OF GOODS

 

The identification of goods is indefinite and must be clarified to further specify the nature, use, or type of certain items, as set out in bold below.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  Applicant may substitute the following wording in bold, if accurate:

 

CLASS 003

 

“Non-medicated cosmetics; non-medicated body and beauty care preparations, all in the nature of cosmetics; non-medicated toiletry preparations; cosmetic preparations for body care; bath soaps; cosmetic soaps; Cosmetic preparations for baths, not for medical purposes; bath and shower gels, not for medical purposes; antiperspirants; non-medicated dentifrices; cosmetic preparations for the care of mouth and teeth; perfumery; perfume; fragrances; oils for perfumes and scents; essential oils; perfumed extracts for perfumes; essences for cosmetic purposes {indicate type of good i.e. in the nature of flower essences for cosmetic purposes}; hair care preparations; cleaning agents for cleaning surfaces; air fragrancing preparations”

 

CLASS 011

 

“Water supply equipment and sanitary installations {indicate type of good i.e. in the nature of flower essences for cosmetic purposes}; thermostatic mixing valves; plumbing fittings with manual and automatic controls {indicate type of good i.e. in the nature of flower essences for cosmetic purposes}; taps for washstands; bidet taps; taps being faucets; showers; shower stands; overhead showers; lateral-jet showers; handheld showers; flexible pipes being parts of shower plumbing installations; shower sets consisting of a shower, shower stands and flexible pipe being part of a shower plumbing installation; shower sets consisting of a shower, shower stand, flexible pipe being part of a shower plumbing installation, and faucet; shower systems {indicate type of good i.e. in the nature of shower systems consisting of a shower, shower stand, flexible pipe being part of a shower plumbing installation, and faucet}; shower systems having equipment for providing, selecting and controlling water jets, water flow and water temperature, and, optionally, lighting, acoustic signals, such as music, and scents {indicate type of good i.e. in the nature of shower systems consisting of a shower, shower stand, flexible pipe being part of a shower plumbing installation, and faucet}; shower cubicles; bath installations; inflow and outflow fittings, and drainage and overflow fittings for sanitary basins, for washstands, for sink units, for bidets, for bathtubs and for shower trays, all being plumbing fittings; plumbing fittings, namely, spouts and drains; lighting apparatus, namely, lighting installations; regulating accessories for water supply {indicate type of good i.e. namely, metered valves}; bath tubs; shower tubs; hot tubs; urinals being sanitary fixtures; bidets; sinks; installation and fastening parts for sanitary installations, not of metal {indicate type of parts i.e. in the nature of Cocks for pipes and pipelines being parts of sanitary installations}; water sockets for sanitary installations being parts of sanitary installations; equipment, in particular spraying equipment for discharging fragrances, essential oils, cosmetics specifically adapted for a shower system {indicate what system is comprised of i.e. comprised of a hand shower, shower head, shower body sprayers, water diverter, shower house, shower grab bars in both metal and non-metal”

 

Please note: Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the U.S. application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found in or encompassed by those in the original U.S. application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).  Additionally, for U.S. applications filed under Trademark Act Section 44(e), the scope of the identification for purposes of permissible amendments may not exceed the scope of the goods and/or services identified in the foreign registration.  37 C.F.R. §2.32(a)(6); Marmark, Ltd. v. Nutrexpa, S.A., 12 USPQ2d 1843, 1845 (TTAB 1989) (citing In re Löwenbräu München, 175 USPQ 178, 181 (TTAB 1972)); TMEP §§1012, 1402.01(b).

 

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.

 

COMMENTS

 

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.

 

Applicant is encouraged to call or email the assigned trademark examining attorney below to resolve the issues in this Office action.  Although the USPTO will not accept an email as a response to an Office action, an applicant can communicate by phone or email to agree to a proposed amendment to the application that will immediately place the application in condition for publication, registration, or suspension.  See 37 C.F.R. §2.62(c); TMEP §707.

 

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  

 

 

Clinton Johnson

/Clinton Johnson/

Trademark Examining Attonrney

Law Office 107

571-272-0425

clinton.johnson@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 11, 2019 for

U.S. Trademark Application Serial No. 88562632

 

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. 

 

 

Clinton Johnson

/Clinton Johnson/

Trademark Examining Attonrney

Law Office 107

571-272-0425

clinton.johnson@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 11, 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.”