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:  January 17, 2020

 

 

The referenced application has been reviewed by the assigned trademark examining attorney.  The 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.

 

•           Search of Office records.

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).

*                    *                    *

Reference is made to the attached evidence from Chemical & Engineering News…

Modified Bee Peptide Slays Deadly Bacteria

Antibiotics: Researchers tweak an antibiotic peptide from bees, making it more potent against drug-resistant bacteria

By Erika Gebel

Researchers have co-opted an antimicrobial peptide made by honeybees and turned it into a potential medicine to treat infections of drug-resistant bacteria (ACS Chem. Biol., DOI: 10.1021/cb300063v).

As more and more bacteria develop resistance, “there is an urgent need for new antibiotics,” says Ralf Hoffmann of the University of Leipzig, in Germany. He thought that peptides used by insects to kill microbes were promising drug candidates because, compared to current antibiotics, they use “a completely different mode of action.” The bee peptides easily slip through bacterial cell membranes and then bind to small proteins that assist with protein folding. By disrupting protein folding, the peptides lead to cell death.

Hoffmann and his colleagues started their search with apidaecin 1b, an 18-amino-acid peptide found in honeybees (Apis mellifera). They found that this peptide easily killed a harmless strain of Escherichia coli. Unfortunately, it was less effective against pathogenic bacteria.

To make apidaecin 1b more toxic to stubborn bacteria, Hoffmann and his colleagues synthesized hundreds of variations of the bee peptide, using both natural and nonnatural amino acids. Api88, the most potent peptide, could kill 37 strains of bacteria, including drug-resistant ones, at concentrations as low as 0.125 µg/mL.

Next, the researchers infected mice with one of two deadly strains of E. coli and then injected api88 into the mice. They found that the peptide cleared the infections at doses of 1.25 and 5 mg per kg of body weight. Hoffmann says the peptides are as potent as conventional antibiotics that treat the strains. Finally, to test the peptide’s toxicity, they injected mice with api88, and looked for signs of unusual behavior or cellular damage. The mice showed no signs of toxicity up to a dose of 40 mg per kg of body weight.

Hoffmann plans to test whether api88 is as effective against resistant bacterial strains in animals as it is in culture.

…which gives rise to the following refusals:

 

1.         Deceptiveness refusal.

Registration is refused because the applied-for mark consists of or includes deceptive matter in relation to the identified goods.  Trademark Act Section 2(a), 15 U.S.C. §1052(a).

A term is deceptive when all three of the following criteria are met:

(1)       Is the term misdescriptive of the character, quality, function, composition, or use of the goods [and/or services]?

(2)       If so, are prospective purchasers likely to believe that the misdescription actually describes the goods [and/or services]?

(3)       If so, is the misdescription likely to affect the purchasing decision of a significant portion of relevant consumers?

In re Tapco Int’l Corp., 122 USPQ2d 1369, 1371 (TTAB 2017) (citing In re Budge Mfg. Co., 857 F.2d 773, 775, 8 USPQ2d 1259, 1260 (Fed. Cir. 1988)); TMEP §1203.02(b); see also In re Spirits Int’l, N.V., 563 F.3d 1347, 1353, 1356, 90 USPQ2d 1489, 1492-93, 1495 (Fed. Cir. 2009) (holding that the test for materiality incorporates a requirement that a “significant portion of the relevant consumers be deceived”).

In this case, the applicant’s mark consists of the wording BEE PEPTIDE, signaling that the goods contain bee peptide.  However, there is no evidence of record that the applicant’s goods do in fact contain this ingredient or component. 

Consumers would be likely to believe this misdescription in the mark, because the attached evidence from Beauty Lifestyle…

Natural ingredients for skin care are easily found in Indonesia, one of which is bee venom or bee venom. The treatment of using bee venom has been carried out by ancestors since the days of Greece, China and Egypt.

Bee venom is beneficial for the skin because it contains enzymes with complex compositions, proteins, and amino acids which are also known as Apitoxin in the form of clear liquid and the main component comes from bee peptide which is useful as an antioxidant, anti-inflammatory and natural anti-bacterial which is very effective for kill[ing] germs that cause acne.

Overall bee venom consists of about 120 active chemical components, including peptides, enzymes, amines, carbohydrates, fats, and amino acids that are very good for facial skin health care.

…shows that it is common in applicant’s industry for such goods to include bee peptide, and consumers have come to expect such ingredient or component.

A misdescriptive ingredient or component would be material to the purchasing decision of a significant portion of the relevant consumers when the evidence demonstrates that the misdescription would make the product or service more appealing or desirable to prospective purchasers.  See In re White Jasmine LLC, 106 USPQ2d 1385, 1392 (TTAB 2013) (citing In re Juleigh Jeans Sportswear Inc., 24 USPQ2d 1694, 1698-99 (TTAB 1992)); TMEP §1203.02(d). 

In the present case, the attached evidence from Beauty Lifestyle shows that products with the ingredient or component bee peptide are more appealing or desirable because same “is useful as an antioxidant, anti-inflammatory and natural anti-bacterial.”  Thus, the misdescription is likely to affect a significant portion of the relevant consumers’ decision to purchase applicant’s goods.

*                    *                    *

To avoid this refusal, the 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, the applicant may amend the identification to the following, if accurate:

cosmetics; mask pack for cosmetic purposes; solid powder for compacts in the nature of cosmetics; tissues impregnated with cosmetic lotions; hair gel; perfume; lavender oil; false eyelashes; eye liner; cleaning preparations; shampoos; dentifrices; nail polish; lipsticks; non-medicated grooming preparations, namely, shampoos for pets; deodorant for personal use; cosmetic soaps; beauty serums; cake flavorings being essential oils; all of the foregoing made in significant part of peptides

 

*                    *                    *

 

Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration. 

If the applicant responds to the above refusal to register, the applicant must also respond to the following.

 

2.         Descriptiveness refusal.

Registration on the Principal Register is refused because the applied-for mark merely describes a(n) ingredient, feature, characteristic, purpose, function, or intended audience of the applicant’s listed goods/services.  Trademark Act §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 In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005); In re Gyulay, 820 F.2d 1216, 1217-18, 3 USPQ2d 1009, 1009-10 (Fed. Cir. 1987).   Moreover, a mark that identifies a group of users to whom an applicant directs its goods and/or services is also merely descriptive.  TMEP §1209.03(i); see In re Planalytics, Inc., 70 USPQ2d 1453, 1454 (TTAB 2004).

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.  In re The Chamber of Commerce of the U.S., ___ F.3d ___, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); In re Bayer Aktiengesellschaft, 488 F.3d 960, 963-64, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007); 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).

“A mark may be merely descriptive even if it does not describe the ‘full scope and extent’ of the applicant’s goods or services.”  In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004) (citing In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1346, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001)); TMEP §1209.01(b).  It is enough if a mark describes only one significant function, attribute, or property.  In re The Chamber of Commerce of the U.S., ___ F.3d ___, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); TMEP §1209.01(b); see In re Oppedahl & Larson LLP, 373 F.3d at 1173, 71 USPQ2d at 1371.

A mark does not need to be merely descriptive of all the goods specified in an application. In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); In re Franklin Cnty. Historical Soc'y, 104 USPQ2d 1085, 1089 (TTAB 2012). “A descriptiveness refusal is proper ‘if the mark is descriptive of any of the [goods or] services for which registration is sought.’” In re The Chamber of Commerce of the U.S., 675 F.3d at 1300, 102 USPQ2d at 1219 (quoting In re Stereotaxis Inc., 429 F.3d 1039, 1040, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005)).

In the instant case, the applicant seeks to register the mark BEE PEPTIDE for “cosmetics; mask pack for cosmetic purposes; solid powder for compacts in the nature of cosmetics; tissues impregnated with cosmetic lotions; hair gel; perfume; lavender oil; false eyelashes; eye liner; cleaning preparations; shampoos; dentifrices; nail polish; lipsticks; non-medicated grooming preparations, namely, shampoos for pets; deodorant for personal use; cosmetic soaps; beauty serums; cake flavorings being essential oils.”

Cosmetic goods such as the applicant’s are known for containing bee peptide; see attached screenshots and discussion in Part 1 above.

The applicant’s goods concern bee peptide (as an ingredient), so the wording BEE PEPTIDE is merely descriptive of such goods rather than source-indicating in nature.  Accordingly, registration is refused under Trademark Act §2(e)(1). 

 

Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration. 

 

 

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.    

 

 

      

/J. Brendan Regan/

Examining Attorney, Law Office 113

571-272-9212

brendan.regan@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 January 17, 2020 for

U.S. Trademark Application Serial No. 88668296

 

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. 

 

 

      

/J. Brendan Regan/

Examining Attorney, Law Office 113

571-272-9212

brendan.regan@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 January 17, 2020, 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.”