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 09, 2019

 

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 Results

 

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

 

However, registration is refused because the applied-for mark merely describes an ingredient of applicant’s goods.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.  In addition to being merely descriptive, the applied-for mark appears to be generic in connection with the identified goods and, therefore, incapable of functioning as a source-identifier for applicant’s goods.  In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987); In re Empire Tech. Dev. LLC, 123 USPQ2d 1544 (TTAB 2017); see TMEP §§1209.01(c) et seq., 1209.02(a).  Under these circumstances, neither an amendment to proceed under Trademark Act Section 2(f) nor an amendment to the Supplemental Register can be recommended.  See TMEP §1209.01(c).

 

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)). 

 

In this case, the applicant has applied to register WHITE CURCUMIN (Standard Characters) for “Non-medicated skin care preparations, namely, creams, lotions, gels, toners, cleaners and peels.”

 

“White” is “One that is white or nearly white, as… Products of a white color, such as flour, salt, and sugar.”  See the attached excerpt from http://www.ahdictionary.com/word/search.html?q=white.  “Curcumin” is “A phytochemical found in turmeric and other species in the genus Curcuma that is used in alternative medicine and is purported to have anti-inflammatory and anticancer properties.”  See the attached excerpt from http://www.yourdictionary.com/curcumin#americanheritage.  The wording is merely descriptive because the curcumin used in applicant’s skin care preparations is white in color.  From the applicant’s website at http://curcumabeauty.com/pages/why-curcumin-and-turmeric-for-skincare (copy attached): 

 

Why Curcumin and Turmeric for Skincare?

 

Curcumin is the active ingredient in Turmeric (Curcuma longa) plant. Curcumin is available in small percentages (around 5%) in Turmeric plant and extracted using solvents such as ethanol.

 

Turmerica LLC has developed wide range of skincare products using patent pending White Curcumin known as Curowhite™ and marketed globally including in the USA. We use many special Turmeric based extracts including CuroWhite™. Turmerica has exclusive rights to develop skincare products using CuroWhite™ which is available in multiple versions: Lyposomal Liquid and Liposomal powder version and other.

 

                        *                                  *                                  *

 

The curcumin used in Turmerica LLC’s Skin Care line provides an ideal alternative to current skincare products and therapies because of its safety profile even at high doses. The white and color-removed curcumin products we use in our products at the same time retaining all the beneficial properties of Turmeric and Curcumin. By Topical administration of curcumin one can directly deliver it to the affected tissue making it useful in treating skin-related disorders. In addition, it is utilized to manage superfluous hair, to improve skin tone and tan, as a skin lightening product, and as an anti-aging remedy. Our current product line and the products in the pipeline will solve a large number of issued and provide following benefits and solutions.

 

[emphasis added].

 

When descriptive terms are combined, the determination of whether the composite mark also has a descriptive significance turns upon the question of whether the combination of terms evokes a new and unique commercial impression.  TMEP §1209.03(d).  If each component retains its descriptive significance in relation to the goods, as is the case here, the combination results in a composite that is itself descriptive.  Duopross Meditech Corp. v. Inviro Medical Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753 (Fed. Cir. 2012); In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370 (Fed. Cir. 2004); In re Gould Paper Corp., 834 F.2d 1017, 1018, 5 USPQ2d 1110, 1111–1112 (Fed. Cir. 1987).

 

Moreover, when there is evidence that the composite mark itself has been used together to form a phrase that is descriptive of the goods, it is unnecessary to engage in an analysis of each individual component.  In re Shiva Corp., 48 USPQ2d 1957, 1958 (TTAB 1998).  TMEP §1209.03(d).  Attached are representative website excerpts from the examining attorney’s search of the internet using the Google® search engine, which show that the term “white curcumin” is used in the health and beauty fields to describe an ingredient in health and beauty products.  The applicant itself uses the term “white curcumin” in a descriptive manner on its website at http://curcumabeauty.com/ (copy attached):  “White Curcumin based Stain-free skincare made to reveal, preserve and restore healthy skin.” [emphasis added]. 

 

Two major reasons for not protecting descriptive marks are (1) to prevent the owner of a descriptive mark from inhibiting competition in the marketplace and (2) to avoid the possibility of costly infringement suits brought by the trademark or service mark owner.  In re Abcor Dev. Corp., 588 F.2d 811, 813, 200 USPQ 215, 217 (C.C.P.A. 1978); TMEP §1209.  Businesses and competitors should be free to use descriptive language when describing their own goods and/or services to the public in advertising and marketing materials.  See In re Styleclick.com Inc., 58 USPQ2d 1523, 1527 (TTAB 2001).  The attached website excerpts also show that others in the health and beauty fields must have the ability to use the term “white curcumin” to accurately describe their products that contain white curcumin as an ingredient.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.

 

If applicant responds to the refusal, applicant must also respond to the requirement set forth below.

 

Identification of Goods

 

Applicant’s mark consists of the term “WHITE CURCUMIN,” which indicates that applicant’s skin care preparations contain white curcumin.

 

This ingredient is considered desirable for applicant’s goods because curcumin has anti-inflammatory and antioxidant properties.  See the attached excerpt from http://www.healthline.com/health/turmeric-for-skin.  Further, “white” curcumin does not stain.  However, if some or all of the goods do not in fact contain this ingredient, then registration may be refused because the mark consists of or includes deceptive matter in relation to the identified goods.  See 15 U.S.C. §1052(a); In re Budge Mfg. Co., 857 F.2d 773, 8 USPQ2d 1259 (Fed. Cir. 1988); TMEP §1203.02-.02(b).

 

To avoid such refusal, applicant may amend the identification to specify that the goods possess this relevant feature or characteristic.  See TMEP §§1203.02(e)(ii), (f)(i), 1402.05 et seq.  However, merely amending the identification to exclude goods with the named feature or characteristic will not avoid a deceptiveness refusal.  TMEP §1203.02(f)(i).

 

Therefore, applicant may amend the identification to the following, if accurate:  Non-medicated skin care preparations containing white curcumin, namely, creams, lotions, gels, toners, cleaners and peels.

 

Applicant’s goods may be clarified or limited, but may not be expanded beyond those originally itemized in the application.  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 or add goods not found or encompassed by those in the original application.  See TMEP §1402.06(a)-(b).  The scope of the goods 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 will further limit scope, and once goods are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

 

RESPONSE GUIDELINES

 

1.         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.  

 

2.         Because of the legal technicalities and strict deadlines of the trademark application process, applicant may wish to hire a private attorney who specializes in trademark matters to assist in the process.  The assigned trademark examining attorney can provide only limited assistance explaining the content of an Office action and the application process.  USPTO staff cannot provide legal advice or statements about an applicant’s legal rights.  TMEP §§705.02, 709.06.  See Hiring a U.S.-licensed trademark attorney for more information.

 

3.         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(s) and/or requirement(s) 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. 

 

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

 

A prompt response to this Office action will expedite the handling of this matter.

 

 

 

/Barbara A. Gaynor/

Barbara A. Gaynor

Trademark Examining Attorney

Law Office 115

571-272-9164

Barbara.Gaynor@uspto.gov

 

 

ADDITIONAL 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 09, 2019 for

U.S. Trademark Application Serial No. 88576015

 

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. 

 

 

/Barbara A. Gaynor/

Barbara A. Gaynor

Trademark Examining Attorney

Law Office 115

571-272-9164

Barbara.Gaynor@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 09, 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.”