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 15, 2019

 

This Office action is supplemental to and supersedes the previous Office action issued on November 15, 2019 in connection with this application.  The assigned trademark examining attorney inadvertently omitted additional information in the refusal regarding the stylization of the mark.  See TMEP §§706, 711.02. 

 

The trademark examining attorney apologizes for any inconvenience caused by the delay in raising this issue(s). 

 

Applicant must address all issue(s) raised in this Office action, in addition to the issues raised in the Office action dated November 15, 2019.  The issue(s) raised in the previous November 15, 2019 Office action is/are as follow and is/are maintained:  Section 2(e)(1) refusal for mere descriptiveness and request for information. 

 

The following is a SUMMARY OF ISSUES that applicant must address:

• SECTION 2(e)(1) REFUSAL – MERELY DESCRIPTIVE
• ADVISORY: SUPPLEMENTAL REGISTER – INTENT TO USE APPLICATION
• INFORMATION ABOUT THE GOODS REQUIRED

Applicant must respond to all issues raised in this Office action and the previous November 15, 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).

 

 

SECTION 2(e)(1) REFUSAL – MERELY DESCRIPTIVE

 

Registration is refused because the applied-for mark merely describes a feature, characteristic, purpose, or function 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 describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods and/or services.  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)). 

 

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).

 

In the present case, applicant’s goods are “dietary and nutritional supplements; dietary and nutritional supplements for endurance sports; dietary and nutritional supplements used for weight loss; nutritional supplements in the form of powder; nutritional and dietary supplements formulated for body builders at the elite level for muscle-building and increasing vascularity; nutritional and dietary supplements formulated for pre-workout consumption for workout session energy and focus.”

 

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).

 

The attached evidence from Merriam-Webster demonstrates that the wording “MEDICATED” means “to treat (someone or something) with or as if with medicine; to impregnate with a medicinal substance. Therefore, the wording is merely descriptive of applicant’s goods because applicant’s nutritional and dietary supplements are impregnated with medicinal supplements to assist weight loss and muscle growth.

 

The applied-for mark shows the wording in stylized lettering.  Stylized descriptive or generic wording is registrable only if the stylization creates a commercial impression separate and apart from the impression made by the wording itself.  See In re Cordua Rests., Inc., 823 F.3d 594, 606, 118 USPQ2d 1632, 1639-40 (Fed. Cir. 2016); In re Northland Aluminum Prods., Inc., 777 F.2d 1556, 1561, 227 USPQ 961, 964 (Fed. Cir. 1985); TMEP §1209.03(w).  Common and ordinary lettering with minimal stylization, as in this case, is generally not sufficiently striking, unique, or distinctive as to make an impression on purchasers separate from the wording.  See In re Sadoru Grp., Ltd., 105 USPQ2d 1484, 1487 (TTAB 2012). 

 

Accordingly, the applied-for mark is merely descriptive of applicant’s goods and/or services and registration is refused under Trademark Act Section 2(e)(1).

 

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.

 

 

 

ADVISORY: SUPPLEMENTAL REGISTER – INTENT TO USE APPLICATION

 

Although an amendment to the Supplemental Register would normally be an appropriate response to this refusal(s), such a response is not appropriate in the present case.  The instant application was filed under Trademark Act Section 1(b) and is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use meeting the requirements of 37 C.F.R. §2.76 has been timely filed.  37 C.F.R. §2.47(d); TMEP §§816.02, 1102.03.

 

If applicant files an acceptable allegation of use and also amends to the Supplemental Register, the application effective filing date will be the date applicant met the minimum filing requirements under 37 C.F.R. §2.76(c) for an amendment to allege use.  TMEP §§816.02, 1102.03; see 37 C.F.R. §2.75(b).  In addition, the undersigned trademark examining attorney will conduct a new search of the USPTO records for conflicting marks based on the later application filing date.  TMEP §§206.01, 1102.03.

 

 

 

INFORMATION ABOUT THE 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: 

 

1.     Do applicant’s goods contain medicinal ingredients or supplements?

 

2.     Do applicant’s goods have medicinal healing or treatment features or are applicant’s goods marketed as having these features? If yes, please list and describe the healing or treatment properties.

 

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. 

 

 

 

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  

 

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.

 

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. 

 

Please note that foreign attorneys, other than authorized Canadian attorneys, are not permitted to represent applicants before the USPTO (e.g., file written communications, authorize an amendment to an application, or submit legal arguments in response to a requirement or refusal).  See 37 C.F.R. §§2.17(e), 11.14(c), (e); TMEP §602.03-.03(c). 

 

The only attorneys who may practice before the USPTO in trademark matters are as follows:

 

(1)       Attorneys in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other U.S. commonwealths or U.S. territories; and

 

(2)       Canadian agents/attorneys who represent applicants located in Canada and (a) are registered with the USPTO and in good standing as patent agents or (b) have been granted reciprocal recognition by the USPTO.

 

See 37 C.F.R. §§2.17(a), (e), 11.1, 11.14(a), (c); TMEP §602.

 

 

/Tricia L. Brown/

Examining Attorney

Law Office 121

(571) 270-7892

tricia.brown@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 15, 2019 for

U.S. Trademark Application Serial No. 88580004

 

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. 

 

 

/Tricia L. Brown/

Examining Attorney

Law Office 121

(571) 270-7892

tricia.brown@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 15, 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.”