To: | Evlution Nutrition, LLC (darren@heitnerlegal.com) |
Subject: | U.S. Trademark Application Serial No. 88620985 - BCAA ENERGY - N/A |
Sent: | October 22, 2019 05:05:49 PM |
Sent As: | ecom101@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 Attachment - 38 Attachment - 39 Attachment - 40 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88620985
Mark: BCAA ENERGY
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Correspondence Address:
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Applicant: Evlution Nutrition, LLC
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Reference/Docket No. N/A
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: October 22, 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.
Office Search
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(f) Claim – Insufficient – Mark Includes Generic Wording
Applicant has filed its application pursuant to Section 2(f) of the Act with a dual claim of distinctiveness based on both a prior registration and a claim of five years of substantially exclusive and continuous use in commerce immediately before the date of the application
Applicant’s claim of distinctiveness based on ownership of prior registration no. 4634529 is not accepted. Reg. No. 4634529 was issued on the Supplemental Register. An applicant may not base a claim of acquired distinctiveness under Trademark Act Section 2(f) on ownership of a registration on the Supplemental Register. 37 C.F.R. §2.41(a)(1); In re Canron, Inc., 219 USPQ 820, 822 n.2 (TTAB 1983); TMEP §1212.04(d).
Applicant’s claim of distinctiveness based on five years of substantially exclusive and continuous use has been noted. However, it too is insufficient because the mark includes generic wording. Generic terms cannot be rescued by proof of distinctiveness or secondary meaning. see TMEP §1212.02(i).
Applicant’s supplements contain “branch chain amino acids” as a primary ingredient. “BCAA” is a recognized generic acronym for “branch chain amino acids”. See attached dictionary definition and internet evidence. The generic name of an ingredient of the goods is incapable of identifying and distinguishing their source and is thus unregistrable on either the Principal or Supplemental Register. See In re Hask Toiletries, Inc., 223 USPQ 1254, 1255 (TTAB 1984) (holding HENNA ‘N’ PLACENTA incapable of registration on the Supplemental Register for hair conditioner); In re Pepcom Indus., Inc., 192 USPQ 400, 402 (TTAB 1976) (holding JIN.SENG incapable for soft drinks); TMEP §1209.01(c).
Disclaimer
If applicant submits a disclaimer of the generic term “BCAA”, then applicant’s 2(f) Claim will be accepted and the mark will be approved for publication.
In this case, the “BCAA” in the mark is unregistrable because it the apt descriptive or generic name of a primary ingredient and genus of applicant’s goods. See attached third party registrations showing prior Office treatment of the term, i.e., disclaimer even on Supplemental Register. A generic term is a common name that the relevant public uses or understands primarily as referring to the category or genus of the goods and/or services in question. In re Nordic Naturals, Inc., 755 F.3d 1340, 1342, 111 USPQ2d 1495, 1497 (Fed. Cir. 2014); H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 989-90, 228 USPQ 528, 530 (Fed. Cir. 1986); see TMEP §1209.01(c). Generic terms are by definition incapable of indicating a particular source of goods and/or services and cannot be registered as trademarks or service marks. In re Cordua Rests., Inc., 823 F.3d 594, 599, 118 USPQ2d 1632, 1634 (Fed. Cir. 2016) (quoting In re Merrill Lynch, Pierce, Fenner, & Smith, Inc., 828 F.2d 1567, 1569, 4 USPQ2d 1141, 1142 (Fed. Cir. 1987)); see TMEP §1209.01(c). Registering generic terms “would grant the owner of [a] mark a monopoly, since a competitor could not describe his goods as what they are.” In re Merrill Lynch, Pierce, Fenner, & Smith, Inc., 828 F.2d at 1569, 4 USPQ2d at 1142.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “ENERGY” 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.
Questions Regarding Office Action
Telephone Call Encouraged
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
/Russ Herman/
Examining Attrorney
Law Office 101
(571)272-9172
russ.herman@uspto.gov
RESPONSE GUIDANCE