To: | The Procter & Gamble Company (pgtrademarks.im@pg.com) |
Subject: | U.S. Trademark Application Serial No. 88600233 - BIOMELATONIN - TM-526734/US |
Sent: | November 23, 2019 06:59:24 PM |
Sent As: | ecom122@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
U.S. Application Serial No. 88600233
Mark: BIOMELATONIN
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Correspondence Address: |
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Applicant: The Procter & Gamble Company
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Reference/Docket No. TM-526734/US
Correspondence Email Address: |
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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 23, 2019
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).
SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
Applicant has applied to register the mark “BIOMELATONIN” for use in connection with “Dietary and nutritional supplements” in Class 05.
The attached evidence from establishes that the term “BIO” indicates that the goods are made from living organisms, that the goods come from natural genetic processes, and/or that the goods contain natural ingredients. See e.g. attached evidence from, http://www.merriam-webster.com/dictionary/bio (“BIO” means living organisms); http://www.allthings.bio/fact-or-myth/fact-or-myth-bio-based-organic-biodegradable/ (“The prefix “bio” means “life” or “living organisms”. It is generally used to indicate biological or natural materials as opposed to synthetic raw materials…”); http://www.organicwelcome.com/bio-vs-organic-difference/ (The term bio is used to designate food grown within the European Union that demonstrates care for the environment, natural genetic processes, a natural reproductive strategy, and care for biodiversity.); http://www.allaboutnapoli.com/post/difference-between-organic-vs-biological (“any product accompanied by the adjective “eco” (organic) or “bio” is synonymous and refers to those foods which have not been treated chemically, which have been grown in respect of nature and have not been genetically modified.”).
Furthermore, the attached evidence establishes that “MELATONIN” is a dietary supplement that can be made from biological or natural materials and that the goods are generally used for improving sleep. See e.g., attached evidence from http://www.healthline.com/nutrition/melatonin (“Melatonin is a common dietary supplement that has gained widespread popularity around the globe… In addition to improving sleep, melatonin is also involved in managing immune function, blood pressure and cortisol levels”);http://nccih.nih.gov/health/melatonin (“Melatonin dietary supplement can be made from animals or microorganisms, but most often they’re made synthetically.”); http://www.everydayhealth.com/melatonin/guide/ (“Melatonin is a dietary supplement…”).
Generally, if the individual components of a mark retain their descriptive meaning in relation to the goods, 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., In re Petroglyph Games, Inc., 91 USPQ2d 1332, 1341 (TTAB 2009) (holding BATTLECAM merely descriptive of computer game software with a feature that involve battles and provides the player with the option to utilize various views of the battlefield); In re Cox Enters., 82 USPQ2d 1040, 1043 (TTAB 2007) (holding THEATL merely descriptive of publications featuring news and information about Atlanta where THEATL was the equivalent of the nickname THE ATL for the city of Atlanta); In re Tower Tech, Inc., 64 USPQ2d 1314, 1317-18 (TTAB 2002) (holding SMARTTOWER merely descriptive of highly automated cooling towers); In re Sun Microsystems, Inc., 59 USPQ2d 1084, 1085 (TTAB 2001) (holding AGENTBEANS merely descriptive of computer software for use in developing and deploying application programs on a global computer network).
Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the goods 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 do not create a unique, incongruous, or nondescriptive meaning in relation to the goods. Specifically, the applied-for mark immediately conveys to consumers that the goods are used for the purpose of improving sleep and that they contain natural ingredients.
Accordingly, registration is refused pursuant to Section 2(e)(1) of the Trademark Act.
Supplemental Register Advisory
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.
REQUIREMENT FOR ADDITIONAL INFORMATION
(1) Fact sheets, instruction manuals, brochures, advertisements and pertinent screenshots of applicant’s website as it relates to the goods in the application, including any materials using the terms in the applied-for mark. Merely stating that information about the goods 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 feature new technology and information regarding competing goods is not available, applicant must provide a detailed factual description of the goods. Factual information about the goods must make clear how they operate, salient features, and prospective customers and channels of trade; and
(3) Applicant must respond to the following questions:
a. Do applicant’s goods contain or are applicant’s goods derived from living organisms?
b. Are the goods manufactured from plant and/or materials?
c. Do applicant’s competitors use “BIO” to advertise similar goods?
d. Do the goods contain natural ingredients?
e. Do the goods contain synthetic ingredients?
f. Are applicant’s goods used for improving sleep, treating insomnia, managing immune function, managing blood pressure, and/or managing cortisol levels?
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
/Katrina J. Goodwin/
Examining Attorney
Law Office 122
571-272-7605
Katrina.Goodwin@uspto.gov
RESPONSE GUIDANCE