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:  May 25, 2020

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SEARCH RESULTS

 

The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d).  15 U.S.C. §1052(d); TMEP §704.02.

 

However, before examination may proceed, the applicant must address the following issues:

 

Summary of Issues:

 

• Identification of Goods Required to Avoid Deceptiveness Refusal
• Disclaimer Required
• Color Claim/Description of the Mark Require Amendment
• Refusal: Mark on Drawing Differs From Mark on Specimen/More Than One Mark

 

IDENTIFICATION OF GOODS REQUIRES AMENDMENT TO AVOID DECEPTIVENESS REFUSAL

 

Applicant’s mark includes the wording “KAVA”, which indicates that applicant’s goods include “kava” as a feature or ingredient. The applicant’s specimen also indicates that kava is an ingredient of the goods.

 

This feature or characteristic is considered desirable for applicant’s goods because, as shown in the attached online references, kava is known to have a calming, anxiety-reducing effect.  However, if some or all of the goods do not in fact have or exhibit this feature or characteristic, then registration may be refused because the mark consists of or includes deceptive matter in relation to the identified goods.  See 15 U.S.C. §1052(a); In re Budge Mfg. Co., 857 F.2d 773, 8 USPQ2d 1259 (Fed. Cir. 1988); TMEP §1203.02-.02(b).

 

To avoid such refusal, applicant may amend the identification to specify that the goods and/or services possess this relevant feature or characteristic.  See TMEP §§1203.02(e)(ii), (f)(i), 1402.05 et seq.  However, merely amending the identification to exclude goods or services with the named feature or characteristic will not avoid a deceptiveness refusal.  TMEP §1203.02(f)(i).

 

Therefore, applicant may amend the identification to the following, if accurate: 

 

Supplements containing kava, namely, herbal supplements, herbal supplements for sleeping problems, natural dietary supplements

 

DISCLAIMER REQUIRED

 

Applicant must disclaim the descriptive wording “KAVA” apart from the mark as shown because, as evidenced by the applicant’s specimen of record, and the online references discussed above, it merely describes features or characteristics of the applicant’s goods.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).

 

A “disclaimer” is a statement that applicant does not claim exclusive rights to an unregistrable component of a mark.  TMEP§1213.  A disclaimer does not physically remove the disclaimed matter from the mark or otherwise affect the appearance of the applied-for mark.  See TMEP§1213.10. 

 

The Office can require an applicant to disclaim an unregistrable part of a mark consisting of particular wording, symbols, numbers, design elements, or combinations thereof.  15 U.S.C. §1056(a).  Under Trademark Act Section 2(e), the Office can refuse registration of an entire mark if the entire mark is merely descriptive, deceptively misdescriptive, or primarily geographically descriptive of the goods and/or services.  15 U.S.C. §1052(e).  Thus, the Office may require an applicant to disclaim a portion of a mark that, when used in connection with the goods and/or services, is merely descriptive, deceptively misdescriptive, primarily geographically descriptive, or otherwise unregistrable (e.g., generic).  See TMEP §§1213, 1213.03.

 

Failure to comply with a disclaimer requirement can result in a refusal to register the entire mark.  TMEP §1213.01(b).

 

The computerized printing format for the Office’s Trademark Official Gazette requires a standardized format for a disclaimer.  TMEP §1213.08(a)(i).  The following is the standard format used by the Office:

 

No claim is made to the exclusive right to use “KAVA” apart from the mark as shown.

 

TMEP §1213.08(a)(i); see In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).

 

COLOR CLAIM/DESCRIPTION OF THE MARK REQUIRE CLARIFICATION/ AMENDMENT

 

The drawing shows the applied-for mark in various colors, including white; however, the color claim and description of the mark does not reference the color white.  The color claim and description must be complete and reference all the colors in the mark.  See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §§807.07(a) et seq.  Therefore, applicant must clarify whether white is used as color in the mark or to indicate background, outlining, shading, and/or transparent areas.  TMEP §807.07(d); see 37 C.F.R. §2.61(b).

 

Generic color names must be used to describe the colors in a color claim and description, e.g., red, yellow, blue.  TMEP §807.07(a)(i)-(ii).

 

To clarify how white is being used in the mark, applicant may satisfy one of the following:

 

(1)        If white is a feature of the mark, applicant must amend the color claim to include white and amend the description to identify where white appears in the literal and/or design elements of the mark.  The following color claim and description are suggested, if accurate:

 

The colors green, black, and white, are claimed as a feature of the mark.

 

The mark consists of a circular design with a thick border formed by a tribal-inspired pattern in black, surrounding a green outline of a leaf from a Kava plant. The wording KAVA VINAKA appears in black below the design. The mark is on a white background.

 

(2)        If white is not a feature of the mark, applicant must amend the description to state that white represents background, outlining, shading and/or transparent areas and is not part of the mark.  The following color claim and description is suggested, if accurate:

 

The colors green and black are claimed as a feature of the mark.

 

The mark consists of a circular design with a thick border formed by a tribal-inspired pattern in black, surrounding a green outline of a leaf from a Kava plant. The wording KAVA VINAKA appears in black below the design. The white in the mark represents transparent areas only and is not claimed as a feature of the mark.

 

TMEP §807.07(d).

 

REFUSAL: MARK ON DRAWING DIFFERS FROM MARK ON SPECIMEN/MORE THAN ONE MARK

 

Mark shown on drawing does not match mark on specimen.  Registration is refused because the specimen does not show the mark in the drawing in use in commerce, which is required in the application or amendment to allege use.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a), 1301.04(g)(i).  The mark appearing on the specimen and in the drawing must match; that is, the mark in the drawing “must be a substantially exact representation of the mark” on the specimen.  See 37 C.F.R. §2.51(a)-(b); TMEP §807.12(a). 

 

In this case, the specimen displays the mark as the circular leaf design as a separate element with a significant space between the design and the wording KAVA VINAKA; further, the wording appears all on the same horizontal line, in the same size font. However, the drawing displays the mark as the design directly above the wording, which appears in a stacked presentation, with the word KAVA appearing larger than the word VINAKA.  Thus, the mark on the specimen does not match the mark in the drawing.  Applicant has thus failed to provide the required evidence of use of the mark in commerce.  See TMEP §807.12(a).

 

Specimen shows mark as multiple marks. Registration is also refused because applicant seeks registration of more than one mark.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §2.52; TMEP §807.01.  An applicant may apply for only one mark in a single application.  37 C.F.R. §2.52; TMEP §807.01; see, e.g., In re Int’l Flavors & Fragrances Inc., 183 F.3d 1361, 1366, 51 USPQ2d 1513, 1516 (Fed. Cir. 1999); In re Hayes, 62 USPQ2d 1443, 1445-46 (TTAB 2002).  A mark combining separate elements is registrable only if it is a single unitary mark engendering a unique and distinct commercial impression.  In re Supreme Steel Framing Sys. Ass’n Inc., 105 USPQ2d 1385, 1387 (TTAB 2012) (citing In re Walker-Home Petroleum, Inc., 229 USPQ 773, 775 (TTAB 1985)).

 

In this case, the application drawing shows the design and the wording appearing as a single unit, however, the specimen shows these elements spatially separated to such a degree that they each appear as separate and distinct marks.

 

Applicant may not delete one or more of these separate elements because doing so would materially alter the commercial impression of the mark as originally filed.  See 37 C.F.R. §2.72(a)(2); TMEP §§807.12(a), 807.14 et seq.  Specifically, the wording indicates a feature of the goods.

 

Response options.  Applicant may respond to these refusals by satisfying one of the following:

 

(1)        Submit a different specimen (a verified “substitute” specimen) for each applicable international class that (a) shows the mark in the drawing in actual use in commerce for the goods and/or services in the application or amendment to allege use, and (b) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use.

 

Examples of specimens.  Specimens for goods include a photograph of (1) the actual goods bearing the mark; (2) an actual container, packaging, tag or label for the goods bearing the mark; or (3) a point-of-sale display showing the mark directly associated with the goods.  See 37 C.F.R. §2.56(b)(1), (c); TMEP §904.03(a)-(m).  A webpage specimen submitted as a display associated with the goods must show the mark in association with a picture or textual description of the goods and include information necessary for ordering the goods.  TMEP §904.03(i); see 37 C.F.R. §2.56(b)(1), (c). 

 

Any web page printout or screenshot submitted as a specimen, whether for goods or services, must include the webpage’s URL and the date it was accessed or printed.  37 C.F.R. §2.56(c).

 

(2)       Alternatively, applicant may respond by submitting an amendment to the application from a use in commerce basis under Trademark Act Section 1(a) to an intent to use basis under Section 1(b), and the refusal will be withdrawn.  See TMEP §806.03(c).  However, if applicant amends the basis to Section 1(b), registration will not be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen showing one mark.  See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.  If the same specimen is submitted with an allegation of use, the same refusal will likely issue.

 

To amend to Section 1(b), applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods and/or services listed in the application as of the filing date of the application.”  37 C.F.R. §2.34(a)(2); TMEP §806.01(b); see 15 U.S.C. §1051(b); 37 C.F.R. §§2.35(b)(1), 2.193(e)(1).

 

For more information about drawings and instructions on how to satisfy these response options using the online Trademark Electronic Application System (TEAS) form, see the Drawing 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.

 

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.    

 

 

/Ellen F. Burns/

Examining Attorney

Law Office 116

571.272.9098

ellen.burns@uspto.gov

(email for informal communications only)

 

 

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 May 25, 2020 for

U.S. Trademark Application Serial No. 88805011

 

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. 

 

 

/Ellen F. Burns/

Examining Attorney

Law Office 116

571.272.9098

ellen.burns@uspto.gov

(email for informal communications only)

 

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 May 25, 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.”