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:  October 31, 2020

 

 

This Office action is in response to applicant’s communication filed on September 28, 2020. 

 

The applicant amended to the Supplemental Register.  However, based on the identification, the mark remains misdescriptive because it fails to express that the purpose of the good is to improve “energy”.  Thus the refusals are continued as follows.

 

Misdescriptive

 

Applicant seeks to register the mark ENERGY for use with “Essential oils; Scented oils”.

 

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, applicant’s mark consists of the wording “Essential oils; Scented oils”.  There is no indication that the goods contain energy ingredients. However the mark is called ENERGY.

 

Consumers would be likely to believe this misdescription in the mark, because the attached evidence from Good Sweat shows that it is common in applicant’s industry for such goods orange, or peppermint or cardamom for energy.  However the applicant has not stated in its identification 1) that the goods would contain these ingredients and 2) would improve energy.

 

A misdescriptive feature or characteristic 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.  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 article shows that the misdescriptive feature, namely energy boosting ingredient, renders the goods more appealing or desirable because consumers seek products that can restore energy and improve their longevity for the day.  Thus, the misdescription is likely to affect a significant portion of the relevant consumers’ decision to purchase applicant’s goods.

 

The nature of the goods with which applicant is using the mark is not clear from the present record and additional information is required.  To permit proper examination of the application, applicant must provide the following:

 

(1)       A written statement explaining whether the goods do or will contain caffeine, creatine, taurine or specific energy ingredient.

 

(2)       A sample of advertisements or promotional materials featuring the goods and/or a photograph of the identified goods, or if such materials are not available, applicant must submit samples of advertisements or promotional materials and a photograph of similar goods.

 

(3)       A written statement describing in detail the nature, purpose, and channels of trade of the goods.

 

See 37 C.F.R. §2.61(b); TMEP §§814, 1402.01(e). 

 

Failure to comply with a request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.  Merely stating that information about the goods or services is available on applicant’s website is an insufficient response and will not make the relevant website information of record.  See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).

 

Applicant is advised that, if applicant’s response to the request for information indicates that the goods identified in the application do not or will not contain specific energy ingredients, registration may be refused on the ground that the applied-for mark is deceptive.  Trademark Act Section 2(a), 15 U.S.C. §1052(a); see In re Budge Mfg. Co., 857 F.2d 773, 775-77, 8 USPQ2d 1259, 1260-62 (Fed. Cir. 1988); In re ALP of S. Beach Inc., 79 USPQ2d 1009, 1010 (TTAB 2006); TMEP §1203.02-.02(e).  Registration may also be refused, in the alternative, on the ground that the applied-for mark is deceptively misdescriptive.  15 U.S.C. §1052(e)(1); see In re Berman Bros. Harlem Furniture Inc., 26 USPQ2d 1514, 1515-16 (TTAB 1993); TMEP §§1203.02(e), 1209.04.

 

The applicant should also note the following additional ground for refusal.

 

Merely Descriptive

 

Applicant seeks to register the mark ENERGY for use with “Essential oils; Scented oils”.

 

Registration is refused because the applied-for mark merely describes the purpose 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 determination of whether a mark is merely descriptive is made in relation to an applicant’s goods and/or services, not in the abstract.  DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012); In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); TMEP §1209.01(b).  “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 this case the mark ENERGY refers to an ingredient that gives energy when consumed.  In addition to the evidence attached in the prior office action, the examining attorney attached in this office action two more articles to shows that essential oils, like peppermint or citrus, increase energy.

 

Terms that describe the function or purpose of a product or service may be merely descriptive.  TMEP §1209.03(p); see, e.g., In re Hunter Fan Co., 78 USPQ2d 1474, 1477 (TTAB 2006) (holding ERGONOMIC merely descriptive of ceiling fans); In re Wallyball, Inc., 222 USPQ 87, 89 (TTAB 1984) (holding WALLYBALL merely descriptive of sports clothing and game equipment); In re Orleans Wines, Ltd., 196 USPQ 516, 517 (TTAB 1977) (holding BREADSPRED merely descriptive of jams and jellies). 

 

Based on the mark, the goods that identify specific energy ingredients and the attached evidence, the examining attorney finds that the mark is descriptive and refuses registration under the Trademark Act  §2(e)(1), 15 U.S.C. 1052(e)(1).

 

 

Applicant May Respond

 

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 chooses to respond to the refusal to register, the applicant must also respond to the following informalities.

 

Supplemental Register

 

The examining attorney will reconsider an amendment to the Supplemental Register if the applicant clarifies the goods and the purpose of the goods by amendment.

 

The applied-for mark has been refused registration on the Principal Register.  Applicant may respond to the refusal by submitting evidence and arguments in support of registration and/or by amending the application to seek registration on the Supplemental Register.  See 15 U.S.C. §1091; 37 C.F.R. §§2.47, 2.75(a); TMEP §§801.02(b), 816.  Amending to the Supplemental Register does not preclude applicant from submitting evidence and arguments against the refusal(s).  TMEP §816.04.

 

If the applicant has any questions or needs assistance in responding to this Office action, please call or e-mail the assigned examining attorney.

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

 

/D. Beryl Gardner/

Trademark Examining Attorney

Law Office 117

571-272-9162 (O)

571-273-9162 (F)

beryl.gardner@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 October 31, 2020 for

U.S. Trademark Application Serial No. 88743332

 

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. 

 

 

/D. Beryl Gardner/

Trademark Examining Attorney

Law Office 117

571-272-9162 (O)

571-273-9162 (F)

beryl.gardner@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 October 31, 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.”