To: | The Sugar Art Inc. FORMERLY ECG Supplies ETC. (afrys1987@gmail.com) |
Subject: | U.S. Trademark Application Serial No. 88717482 - LEMON - N/A |
Sent: | April 05, 2021 09:39:56 AM |
Sent As: | ecom114@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88717482
Mark: LEMON
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Correspondence Address: The Sugar Art Inc. FORMERLY ECG Supplies
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Applicant: The Sugar Art Inc. FORMERLY ECG Supplies ETC.
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Reference/Docket No. N/A
Correspondence Email Address: |
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FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA). A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action.
Issue date: April 05, 2021
This Office action responds to applicant’s communication filed on March 15, 2021.
In the initial Office action, examining attorney refused registration of applicant’s trademark under Section 2(e)(1) and refused applicant’s Section 2(f) claim.
For the reasons set forth below, these refusals are now made FINAL. See 15 U.S.C. §1052(e)(1); 37 C.F.R. §2.63(b).
Summary of Issues:
Section 2(e)(1) Refusal – Mark is Merely Descriptive
Applicant seeks registration of LEMON (standard characters) for “Food coloring” in International Class 002.
In the initial Office action, examining attorney provided evidence from Merriam-Webster showing LEMON means “of the color lemon yellow.” See evidence attached to Office action dated March 6, 2020. Therefore, examining attorney found the wording LEMON to describe that applicant’s “Food coloring” is this color.
In response, applicant broadly asserts the mark is not descriptive, argues that competitors can use alternative wording, and that minimal evidence has been provided of competitors using this term.
First, examining attorney notes that applicant’s assertions that the mark is not descriptive do not contain any arguments specific to the applied-for mark, but merely include example of different marks which were deemed suggestive. Without any argument as to the meaning of the applied-for mark, these arguments are unpersuasive.
Next, applicant argues that alternative wording is available to competitors. However, the fact that alternative wording exists does not eliminate the descriptive nature of the wording at issue, nor does it mean one party should be granted a monopoly of descriptive wording.
Regarding evidence of competitors using this term, the attached evidence from Chefmaster, LorAnn, and Country Kitchen Sweetart shows other yellow food coloring products referred to as “LEMON yellow.” As such, it is clear that the term LEMON describes this color of food coloring and is commonly used by competitors.
For these reasons, the refusal under Section 2(e)(1) is now made FINAL.
Section 2(f) Claim Unacceptable
In response, applicant did not address this refusal, therefore, this refusal is now made FINAL.
Applicant noted in their response an alternative request that the mark be registered on the Supplemental Register under Section 2(f). Applicant is advised that a Section 2(f) claim may only be made on the Principal Register. If applicant would like to register the mark on the Supplemental Register, it must withdraw the Section 2(f) claim. See 15 U.S.C. §§1091, 1212.02(c); 37 C.F.R. §§2.47, 2.75(a); TMEP §§801.02(b), 816.
(1) Use of the registration symbol ® with the registered mark in connection with the designated goods and/or services, which provides public notice of the registration and potentially deters third parties from using confusingly similar marks.
(2) Inclusion of the registered mark in the USPTO’s database of registered and pending marks, which will (a) make it easier for third parties to find it in trademark search reports, (b) provide public notice of the registration, and thus (c) potentially deter third parties from using confusingly similar marks.
(3) Use of the registration by a USPTO trademark examining attorney as a bar to registering confusingly similar marks in applications filed by third parties.
(4) Use of the registration as a basis to bring suit for trademark infringement in federal court, which, although more costly than state court, means judges with more trademark experience, often faster adjudications, and the opportunity to seek an injunction, actual damages, and attorneys’ fees and costs.
(5) Use of the registration as a filing basis for a trademark application for registration in certain foreign countries, in accordance with international treaties.
See 15 U.S.C. §§1052(d), 1091, 1094; J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition §§19:33, 19:37 (rev. 4th ed. Supp. 2017).
How to respond. Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).
John Sullivan
/John Sullivan/
Examining Attorney
Law Office 114
(571) 272-9519
john.sullivan@uspto.gov
RESPONSE GUIDANCE