Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

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

 

Introduction

 

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 Description
• Section 2(f) Claim Unacceptable

 

Section 2(e)(1) Refusal – Mark is Merely Descriptive

 

Registration is refused because the applied-for mark merely describes a feature or characteristic of applicant’s goods and/or services.  Trademark Act Section 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, 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)). 

 

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

 

Applicant previously asserted a claim of acquired distinctiveness under Trademark Act Section 2(f) based on use of the mark in commerce with the goods and/or services for five years prior to the date on which the claim is made.  See 15 U.S.C. §1052(f).  However, as the attached and previously attached evidence demonstrates, the allegation of five years’ use is insufficient to show acquired distinctiveness because the applied-for mark is highly descriptive of applicant’s goods and/or services.  See In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 1336-37, 116 USPQ2d 1262, 1265 (Fed. Cir. 2015); In re Virtual Indep. Paralegals, LLC, 2019 USPQ2d 111512, at *11-12 (TTAB 2019); TMEP §1212.05(a).  An applicant’s evidentiary burden of showing acquired distinctiveness increases with the level of descriptiveness of the mark sought to be registered; as in this case, a more descriptive term requires more evidence.  Royal Crown Co. v. Coca-Cola Co., 892 F.3d 1358, 1365, 127 USPQ2d 1041, 1045 (Fed. Cir. 2018) (citing In re Steelbuilding.com, 415 F.3d 1293, 1300, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005)).  As the mark in this case is highly descriptive, applicant’s evidence is not sufficient to show acquired distinctiveness.

 

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.

 

Although registration on the Supplemental Register does not afford all the benefits of registration on the Principal Register, it does provide the following advantages to the registrant:

 

(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

• 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 April 05, 2021 for

U.S. Trademark Application Serial No. 88717482

 

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. 

 

 

John Sullivan

/John Sullivan/

Examining Attorney

Law Office 114

(571) 272-9519

john.sullivan@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 April 05, 2021, 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.”