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 18, 2020
SEARCH OF USPTO DATABASE OF
MARKS
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.
REFUSALS & REQUIREMENTS
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.
SUMMARY OF ISSUES:
- SECTION 2(e)(1) REFUSAL
- DISCLAIMER ADVISORY
- IDENTIFICATION
SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
Registration is refused because the applied-for mark merely describes a quality and/or
characteristic 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.
Generally, if the individual components of a mark retain their descriptive meaning
in relation to the goods and/or services, the combination results in a composite mark that is itself descriptive and not registrable. In re Fat Boys Water Sports
LLC, 118 USPQ2d 1511, 1516 (TTAB 2016) (citing In re Tower Tech, Inc., 64 USPQ2d 1314, 1317-18 (TTAB (2002)); TMEP §1209.03(d); see, e.g., Apollo
Med. Extrusion Techs., Inc. v. Med. Extrusion Techs., Inc., 123 USPQ2d 1844, 1851 (TTAB 2017) (holding MEDICAL EXTRUSION TECHNOLOGIES merely descriptive of medical extrusion goods produced by
employing medical extrusion technologies); In re Cannon Safe, Inc., 116 USPQ2d 1348, 1351 (TTAB 2015) (holding SMART SERIES merely descriptive of metal gun safes); In re King
Koil Licensing Co., 79 USPQ2d 1048, 1052 (TTAB 2006) (holding THE BREATHABLE MATTRESS merely descriptive of beds, mattresses, box springs, and pillows).
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 applicant’s goods and/or services and do not
create a unique, incongruous, or nondescriptive meaning in relation to the goods and/or services.
Specifically, ULTIMATE is a laudatory term and the goods are a VARMINT GUARD.
“Marks that are merely laudatory and descriptive of the
alleged merit of a product [or service] are . . . regarded as being descriptive” because “[s]elf-laudatory or puffing marks are regarded as a condensed form of describing the character or quality of
the goods [or services].” DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1256, 103 USPQ2d 1753, 1759 (Fed. Cir. 2012)
(quoting In re The Boston Beer Co., 198 F.3d 1370, 1373, 53 USPQ2d 1056, 1058 (Fed. Cir. 1999)); see In re Nett Designs, Inc., 236 F.3d 1339, 1342, 57
USPQ2d 1564, 1566 (Fed. Cir. 2001) (holding THE ULTIMATE BIKE RACK merely laudatory and descriptive of applicant’s bicycle racks being of superior quality); In re Dos Padres,
Inc., 49 USPQ2d 1860, 1862 (TTAB 1998) (holding QUESO QUESADILLA SUPREME merely laudatory and descriptive of applicant’s cheese being of superior quality); TMEP
§1209.03(k).
In fact, “puffing, if anything, is more likely to render a mark merely descriptive, not less
so.” DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d at 1256, 103 USPQ2d at 1759.
Adding the term THE to a descriptive or generic term generally does not add any
source-indicating significance or otherwise affect the term’s descriptiveness or genericness. See In re The Place Inc., 76 USPQ2d 1467, 1468
(TTAB 2005) (holding THE GREATEST BAR merely descriptive of restaurant and bar services; “the definite article THE . . . add[s] no source-indicating significance to the mark as a whole”); Conde Nast Publ’ns Inc. v. Redbook Publ’g Co., 217 USPQ 356, 357, 360 (TTAB 1983) (holding THE MAGAZINE FOR YOUNG WOMEN a “common descriptive or ‘generic’ name of a class or type of
magazine” and incapable of indicating source; “[t]he fact that the slogan also includes the article ‘The’ is insignificant. This word cannot serve as an indication
of origin, even if applicant’s magazine were the only magazine for young women.”); In re The Computer Store, Inc., 211 USPQ 72, 74-75 (TTAB 1981) (holding THE COMPUTER STORE
merely descriptive of, and the common descriptive name for, computer-related services); see also In re G. D. Searle & Co., 143 USPQ 220 (TTAB 1964),
aff’d, 360 F.2d 1966, 149 USPQ 619 (C.C.P.A. 1966) (holding “THE PILL” a common descriptive name for pharmaceutical preparations in tablet form, and thus does not serve as an
indicator of source or origin in applicant).
Together, THE ULTIMATE VARMINT GUARD immediately conveys information to the relevant consumer regarding a quality and/or characteristic of the applied-for
goods.
Although applicant’s mark has been refused registration, applicant may respond to the
refusal(s) by submitting evidence and arguments in support of registration.
DISCLAIMER ADVISORY
Applicant is advised that, if the application is amended to seek registration on the Principal Register under Trademark Act Section 2(f)
or on the Supplemental Register, applicant will be required to disclaim “VARMINT GUARD” because such wording appears to be generic in the context of applicant’s goods and/or services. See 15 U.S.C. §1056(a); In re Wella Corp., 565 F.2d 143, 144, 196 USPQ 7, 8 (C.C.P.A. 1977); In re Creative Goldsmiths of Wash.,
Inc., 229 USPQ 766, 768 (TTAB 1986); TMEP §1213.03(b).
Applicant may submit a disclaimer in the following format:
No claim is made to the exclusive right to use “VARMINT GUARD” apart from the mark as shown.
TMEP §1213.08(a)(i).
For an overview of disclaimers and instructions on how to provide one using the Trademark Electronic Application System (TEAS), see
the Disclaimer
webpage.
IDENTIFICATION
The identification of goods contains wording that must be clarified.
See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must specify the Class 7 nature of the goods.
Applicant may substitute the following wording, if accurate:
Class 7
Guards specially adapted for electronic feeders for animals; Plastic guards specially adapted for electronic feeders for wildlife
Applicant may amend the identification to clarify or limit the goods and/or services, but not to
broaden or expand the goods and/or services beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP
§1402.06. Generally, any deleted goods and/or services may not later be reinserted. See TMEP
§1402.07(e).
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.
How to respond. Click to file a response to this nonfinal Office action.
/Samuel R. Paquin/
Trademark Examining Attorney
Law Office 101
United States Patent & Trademark Office
(571) 272-2514
spaquin@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.
