To: | Beyond Healthcare (drstrotheide@gmail.com) |
Subject: | U.S. Trademark Application Serial No. 88800148 - SLEEP ASSIST - N/A |
Sent: | May 06, 2020 05:10:14 PM |
Sent As: | ecom126@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88800148
Mark: SLEEP ASSIST
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Correspondence Address:
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Applicant: Beyond Healthcare
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Reference/Docket No. N/A
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 06, 2020
SEARCH OF USPTO DATABASE OF MARKS
I. Section 2(e)(1) Refusal – Merely Descriptive
II. Supplemental Register Advisory
SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods. 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)).
The applicant’s mark is “SLEEP ASSIST” for “natural sleep aid preparations” in International Class 5.
The attached definitions from the Merriam-Webster Dictionary shows “SLEEP” means “the natural easily reversible periodic state of many living things that is marked by the absence of wakefulness and by the loss of consciousness of one’s surroundings” and “ASSIST” means “to give support or aid”. The application identifies the goods as functioning to “aid” or “ASSIST” one’s “SLEEP”. Thus, the wording “SLEEP” and “ASSIST” describes the applicant’s goods.
Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the goods 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 applicant’s goods and do not create a unique, incongruous, or nondescriptive meaning in relation to the goods. Specifically, the applicant’s goods are preparations to “aid” one going to “sleep”. Thus, when consumers encounter “SLEEP ASSIST” in connection with the applicant’s goods, they immediately understand the preparations “ASSIST” with “SLEEP”.
For the reasons set forth above, registration must be refused on the Principal Register under Trademark Act Section 2(e)(1) because the applied-for mark merely describes a function of applicant’s sleep aid goods.
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.
Please note the advisory below.
SUPPLEMENTAL REGISTER ADVISORY
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.
U.S. COUNSEL SUGGESTED
Because of the legal technicalities and strict deadlines of the trademark application process, applicant is encouraged to hire a private attorney who specializes in trademark matters to assist in this process. The assigned trademark examining attorney can provide only limited assistance explaining the content of an Office action and the application process. USPTO staff cannot provide legal advice or statements about an applicant’s legal rights. TMEP §§705.02, 709.06. See Hiring a U.S.-licensed trademark attorney for more information.
How to respond. Click to file a response to this nonfinal Office action.
/Shannon B. Keating/
Shannon Keating
Trademark Examining Attorney
Law Office 126
571-270-3734
shannon.keating@uspto.gov
RESPONSE GUIDANCE