United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88799838
Mark: READY-2-RECYCLE PACKAGING
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Correspondence Address: |
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Applicant: MIR, NAZIR
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Reference/Docket No. 20-AT10-0217
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: May 13, 2020
SECTION 2(e)(1) REFUSAL – MERELY DESCRIPTIVE
Applicant has applied to register the mark READY-2-RECYCLE PACKAGING in standard characters for “recyclable, sustainable flexible or rigid packaging materials, products and systems or combination thereof, that falls under one of the resin or recycling identification codes of 1 through 6, and can be recycled through appropriate recycling streams; The packaging materials, products and systems can include a portfolio of polymeric films, sheets, bags, containers and trays (i.e., polyester, high density polyethylene, low density polyethylene, polypropylene, polystyrene), coupling agents (i.e., compatibilizers), glue (i.e., adhesives) and resins (i.e., polyester, epoxy and vinylester) that promote recycling efforts with respect to the packaging materials, products and systems” in International Class 016.
In the present case, the attached on-line dictionary evidence shows that READY means “in a suitable condition for use;” RECYCLE means “to change waste materials such as newspapers and bottles so that they can be used again;” and PACKAGING means “the boxes, bottles, plastic etc used for wrapping products so that they can be sold.” In addition, the number 2 in applicant’s mark is phonetically equivalent of the word “to” which means “used for showing the purpose of an action.” A novel spelling or an intentional misspelling that is the phonetic equivalent of a merely descriptive word or term is also merely descriptive if purchasers would perceive the different spelling as the equivalent of the descriptive word or term. See In re Quik-Print Copy Shop, Inc., 616 F.2d 523, 526 & n.9, 205 USPQ 505, 507 & n.9 (C.C.P.A. 1980) (holding “QUIK-PRINT,” phonetic spelling of “quick-print,” merely descriptive of printing and photocopying services); In re Calphalon Corp., 122 USPQ2d 1153, 1163 (TTAB 2017) (holding “SHARPIN”, phonetic spelling of “sharpen,” merely descriptive of cutlery knife blocks with built-in sharpeners); In re Carlson, 91 USPQ2d 1198, 1203 (TTAB 2009) (holding “URBANHOUZING,” phonetic spelling of “urban” and “housing,” merely descriptive of real estate services); TMEP §1209.03(j). Therefore, the mark is merely descriptive of a feature or characteristic of applicant’s goods in that they are boxes, bottles, plastic etc. for wrapping products and come in a suitable condition for the purpose of being changed and used again. This finding is further evidence by the attached websites showing industry usage of the wording forming the mark in relation to packaging goods such as those identified in the application.
Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the goods and/or services is the combined mark registrable. See In re Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968); In re Positec Grp. Ltd., 108 USPQ2d 1161, 1162-63 (TTAB 2013).
In this case, both the individual components and the composite result are descriptive of a feature or characteristic of applicant’s goods and do not create a unique, incongruous, or nondescriptive meaning in relation to the goods. Thus, consumers will immediately understand that the mark merely refers to this feature or characteristic of the goods rather than to the source of the goods. Accordingly, registration is refused pursuant to Section 2(e)(1) of the Trademark Act.
DOMICILE ADDRESS
An individual applicant’s domicile is the place a person resides and intends to be the person’s principal home. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. A juristic entity’s domicile is the principal place of business, i.e., headquarters, where a juristic entity applicant’s senior executives or officers ordinarily direct and control the entity’s activities. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. An applicant whose domicile is located outside of the United States or its territories is foreign-domiciled and must be represented at the USPTO by a U.S.-licensed attorney qualified to practice before the USPTO under 37 C.F.R. §11.14. 37 C.F.R. §2.11(a).
The application record lists applicant as an individual and specifies applicant’s domicile as another party’s address, specifically, applicant’s attorney of record. In most cases, another party’s address is not acceptable as a domicile address because it does not identify the location of the place applicant resides and intends to be applicant’s principal home. See37 C.F.R. §§2.2(o)-(p), 2.189; Examination Guide 4-19, at I.A.3. Thus, applicant must provide its domicile street address. See 37 C.F.R. §2.189. Alternatively, an applicant may demonstrate that the listed address is, in fact, the applicant’s domicile. Examination Guide 4-19, at I.A.3.
To provide documentation supporting applicant’s domicile, open the correct TEAS response form and enter the serial number, answer “yes” to wizard question #3, and on the “Additional Statement(s)” page, below the “Miscellaneous Statement” field, click the button below the text box to attach documentation to support the address.
To provide applicant’s domicile street address, after opening the correct TEAS response form and entering the serial number, answer “yes” to wizard question #5, and provide applicant’s street address on the “Owner Information” page. Information provided in the TEAS response form will be publicly viewable.
If applicant wants to hide its domicile address from public view because of privacy or other concerns, applicant must have a mailing address that can be made public and differs from its domicile address. In this case, applicant must follow the steps below in the correct order to ensure the domicile address will be hidden:
(1) First submit a TEAS Change Address or Representation (CAR) form. Open the form, enter the serial number, click “Continue,” and
(a) Use the radio buttons to select “Attorney” for the role of the person submitting the form;
(b) Answer “Yes” to the wizard question asking, “Do you want to UPDATE the mailing address, email address, phone or fax number(s) for the trademark owner/holder?” and click “Continue;”
(c) On the “Owner Information” page, if the previously provided mailing address has changed, applicant must enter its new mailing address in the “Mailing Address” field, which will be publicly viewable;
(d) On the “Owner Information” page, uncheck the box next to “Domicile Address” and enter the new domicile address in the text box immediately below the checkbox.
(2) Then submit a TEAS response form to indicate the domicile address has been changed. Open the form and
(a) Answer “yes” to wizard question #3 and click “Continue;”
(b) Click on the “Miscellaneous Statement” box on the “Additional Statement(s)” page, and enter a statement in the text box immediately below the checkbox that the domicile address was previously changed in the CAR form.
CLASSIFICATION AND IDENTIFICATION OF GOODS
An in depth knowledge of the relevant field should not be necessary for understanding a description of the goods. TMEP §1402.01. “[T]echnical, high-sounding verbiage” should be avoided. Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ at 322.
Furthermore, applicants should not use parentheses in identifications in their applications so as to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate goods and/or services that have been deleted from registrations or in an affidavit of incontestability to indicate goods and/or services not claimed. See TMEP §1402.12. The only exception is that parenthetical information is permitted in identifications in an application if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity or scope of the identification, e.g., “fried tofu pieces (abura-age).” Id.
Applicant should note that any wording in bold, in italics, underlined and/or in ALL CAPS below offers guidance and/or shows
the changes being proposed for the identification of goods and/or services. If there is wording in the applicant’s version of the identification of goods and/or
services which should be removed, it will be shown with a double line through it such as this: strikethrough. When making its amendments, applicant should enter them in standard font, not in bold, in italics, underlined and/or in ALL
CAPS.
Applicant may adopt the following classification and identification, if accurate:
International Class 001: ADHESIVES AND GLUES FOR USE IN THE MANUFACTURE OF RECYCLABLE AND SUSTAINABLE FLEXIBLE OR RIGID PACKAGING; UNPROCESSED EPOXY RESINS FOR USE IN THE MANUFACTURE OF RECYCLABLE AND SUSTAINABLE FLEXIBLE OR RIGID PACKAGING
International Class 016: RECYCLABLE AND SUSTAINABLE FLEXIBLE OR RIGID PACKAGING MATERIALS, NAMELY, __________ {please specify goods in International Class 016 only, using common commercial or generic names, e.g., plastic film for packaging, plastic bags for packaging, plastic sheets for packaging}
International Class 017: RECYCLABLE AND SUSTAINABLE FLEXIBLE OR RIGID PACKAGING MATERIALS, NAMELY, __________ {please specify goods in International Class 017 only, using common commercial or generic names, e.g., expanded plastic pellets for packaging}
International Class 020: RECYCLABLE AND SUSTAINABLE FLEXIBLE OR RIGID PACKAGING MATERIALS, NAMELY, __________ {please specify goods in International Class 020 only, using common commercial or generic names, e.g., packaging containers of plastic, rigid plastic trays}
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.
MULTIPLE-CLASS APPLICATION REQUIREMENTS
The application identifies goods in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule). The application identifies goods that are classified in at least 4 classes; however, applicant submitted a fee sufficient for only 1 class. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).
For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.
RESPONSE GUIDELINES
For this application to proceed, applicant must explicitly address each refusal and/or 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 an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action. See TMEP §§705.02, 709.06.
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
How to respond. Click to file a response to this nonfinal Office action.
/Mariam Aziz Mahmoudi/
Trademark Examining Attorney
LO 115
United States Patent & Trademark Office
Tel. (571) 272-9733
mariam.mahmoudi@uspto.gov
RESPONSE GUIDANCE