To: | Vitality Bowls (Andrew@MarksKlein.com) |
Subject: | U.S. Trademark Application Serial No. 88654341 - WHEY GREEN - N/A |
Sent: | January 23, 2020 12:06:32 PM |
Sent As: | ecom122@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88654341
Mark: WHEY GREEN
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Correspondence Address:
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Applicant: Vitality Bowls
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Reference/Docket No. N/A
Correspondence Email Address: |
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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: January 23, 2020
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 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
Registration is refused because the applied-for mark merely describes a characteristic and 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.
The applied-for mark is WHEY GREEN in standard characters, for “smoothies” in International Class 32.
A mark is merely descriptive if it describes an ingredient and characteristic 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)).
“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, the Merriam-Webster Dictionary defines WHEY as “the watery part of milk that is separated from the…curd…and that is rich in lactose, minerals, and vitamins and contains lactalbumin and traces of fact” (see http://www.merriam-webster.com/dictionary/whey). The Mayo Clinic defines whey protein as “one of the primary proteins found in dairy products. A byproduct of the cheese-making process, whey protein provides substantial amounts of the essential amino acids that are needed to carry out the functions that proteins perform in the body” (see http://www.mayoclinic.org/drugs-supplements-whey-protein/art-20363344). The specimen provided by the applicant demonstrates that one of the ingredients in WHEY GREEN is “whey protein” (emphasis added).
Additionally, the term GREEN in the mark is used to refer to a characteristic of the smoothie. The Merriam-Webster Dictionary defines green as an adjective referring to “of the color green” (see http://www.merriam-webster.com/dictionary/green). The WHEY GREEN smoothie contains kale and broccoli, which are generally ingredients used to make “green smoothies”, as seen in the recipes for green smoothies that are “of the color green” from Joy Food Sunshine (see http://joyfoodsunshine.com/green-smoothie/) and Mind Body Green (see http://www.mindbodygreen.com/0-7956/5-delicious-green-smoothies-for-beginners.html.
Thus, the wording WHEY GREEN indicates to the average consumer that its smoothies feature whey protein as an ingredient along with leafy greens to give the smoothie a characteristic green color. The applied-for mark is therefore descriptive of its identified goods of smoothies.
SUPPLEMENTAL REGISTER – ADVISORY
DISCLAIMER REQUIRED – GENERIC ADVISORY
Applicant may submit a disclaimer in the following format:
No claim is made to the exclusive right to use “WHEY” apart from the mark as shown.
TMEP §1213.08(a)(i).
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
IDENTIFICATION OF GOODS
This feature or characteristic is considered desirable for applicant’s goods because, as noted above from the Mayo Clinic article, whey protein “provides substantial amounts of the essential amino acids that are needed to carry out the functions that proteins perform in the body”. However, if some or all of the goods do not in fact have or exhibit this feature or characteristic, 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 ingredient. 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).
Suggested Amendment
Applicant may amend to adopt the following suggested wording, if acceptable (changes in bold, comments in bold italic):
Class 32: smoothies containing whey protein
Amendment Guidelines
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.
RESPONSE GUIDELINES
Response guidelines. For this application to proceed, applicant must explicitly address each refusal and 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 and requirements 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.
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.
/Harini Ganesh/
Harini Ganesh
Trademark Examining Attorney
Law Office 122
571-272-5128
harini.ganesh@uspto.gov
RESPONSE GUIDANCE