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:  December 10, 2020

 

INTRODUCTION

 

This Office action is supplemental to and supersedes the previous Office action issued on 6/16/2020 in connection with this application.  Based on information and/or documentation in applicant’s response, the trademark examining attorney now issues the following new refusals:  Section 2(a) – Deceptiveness; Section 2(e)(1)– Deceptively Misdescriptive.  See TMEP §§706, 711.02. 

 

In a previous Office action dated 6/16/2020, the trademark examining attorney refused registration of the applied-for mark based on the following:  Section 2(e)(1) – Merely Descriptive; Mark on Drawing Differing from Mark on Specimen.  In addition, applicant was required to satisfy the following requirement(s):  amend the identification of goods, respond to the request for information.

 

Based on applicant’s response, the trademark examining attorney notes that the following requirement(s) have been satisfied:  respond to the request for information. 

 

The following refusal(s) have also been obviated:  Mark on Drawing Differs from Mark on Specimen.  See id. 

 

In addition, the following refusal(s) and/or requirement(s) have been withdrawn:  Section 2(e)(1) – Merely Descriptive; amend the identification of goods.  See id. 

 

The following is a SUMMARY OF ISSUES that applicant must address:

 

            •  NEW ISSUE:  Section 2(a) Refusal – Deceptiveness

            •  NEW ISSUE: Section 2(e)(1) Refusal – Deceptively Misdescriptive

 

Applicant must respond to all issues raised in this Office action and the previous 6/16/2020 Office action, within six (6) months of the date of issuance of this Office action.  37 C.F.R. §2.62(a); see TMEP §711.02.  If applicant does not respond within this time limit, the application will be abandoned.  37 C.F.R. §2.65(a).

 

SECTION 2(a) REFUSAL – DECEPTIVENESS

 

Registration is refused because the applied-for mark consists of or includes deceptive matter in relation to the identified goods and/or services.  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 “BAMBOO”, indicating that the goods and/or services have or exhibit the following feature or characteristic:  that they are made from material derived from the bamboo plant.  However, according to the evidence of record, applicant’s goods and/or services do not in fact have or exhibit this feature or characteristic. 

 

Consumers would be likely to believe this misdescription in the mark, because the attached evidence from Wikipedia.com, researchgate.net, and bambooinstruments.com shows that it is common in applicant’s industry for such goods and/or services to include bamboo, and consumers have come to expect such feature or characteristic.  Specifically, this evidence shows that bamboo is a widely used material in musical instruments originating from all over the world.

 

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 attached evidence from alquierguitars.com, The Journal of the Acoustical Society of America, annualreviews.org, and bambooinstruments.com shows that the misdescriptive feature or characteristic, namely that the goods are made of bamboo, renders the goods and/or services more appealing or desirable because it exhibits desirable qualities as a result of its unique structural composition and material makeup.  Additionally, bamboo is touted for being an environmentally friendly instrument building material.  Thus, the misdescription is likely to affect a significant portion of the relevant consumers’ decision to purchase applicant’s goods and/or services.

 

Applicant should note the following additional ground for refusal.

 

SECTION 2(e)(1) REFUSAL – DECEPTIVELY MISDESCRIPTIVE

 

Registration is refused because the applied-for mark is deceptively misdescriptive of applicant’s goods and/or services.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see In re Hinton, 116 USPQ2d 1051, 1051-52 (TTAB 2015) (holding THCTea deceptively misdescriptive of tea-based beverages not containing THC); In re Schniberg, 79 USPQ2d 1309, 1312 (TTAB 2006) (holding SEPTEMBER 11, 2001 deceptively misdescriptive of history books and entertainment services not pertaining to the events of September 11, 2001); TMEP §1209.04.

 

The test for determining whether a mark is deceptively misdescriptive has two parts:  (1) whether the mark misdescribes the goods and/or services; and if so, (2) whether consumers are likely to believe the misrepresentation.  See In re White Jasmine LLC, 106 USPQ2d 1385, 1394 (TTAB 2013) (citing In re Quady Winery, Inc., 221 USPQ 1213, 1214 (TTAB 1984)); TMEP §1209.04. 

 

Regarding the first part of the test, a mark is misdescriptive when the mark merely describes a significant aspect of the goods and/or services that the goods and/or services could plausibly possess but in fact do not.  In re Hinton, 116 USPQ2d 1051, 1052 (TTAB 2015); In re Schniberg, 79 USPQ2d 1309, 1312 (TTAB 2006); In re Phillips-Van Heusen, 63 USPQ2d 1047, 1048 (TTAB 2005); see TMEP §1209.04.  To be merely descriptive, a mark must immediately convey knowledge of a quality, feature, function, or characteristic of an applicant’s goods or services.  In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (quoting In re Bayer Aktiengesellschaft, 488 F.3d 960, 963, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)); TMEP §1209.01(b).

 

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).  The attached evidence from ahdictionary.com shows that the mark means “any of various usually woody, temperate or tropical plants chiefly of the genera Arundinaria, Bambusa, Dendrocalamus, Phyllostachys, or Sasa in the grass family,” which is merely descriptive of applicant’s goods in that it would be describing their material composition, which is an essential characteristic and feature of the goods.  Also, as discussed in the above refusal, numerous instruments are made of bamboo, so it is extremely feasible that applicant’s instruments could be made of bamboo.  However, in this case, it appears the goods do not in fact possess this feature or characteristic.

 

Regarding the second part of the test, the Board has applied the reasonably prudent consumer test in assessing whether consumers are likely to believe the misrepresentation.  In re Hinton, 116 USPQ2d 1051, 1052 (TTAB 2015) (citing R. J. Reynolds Tobacco Co. v. Brown & Williamson Tobacco Corp., 226 USPQ 169, 179 (TTAB 1985)). 

 

In this case, the attached evidence from Wikipedia.com, researchgate.net, bambooistruments.com, and novica.com shows that the reasonably prudent consumer is likely to believe the representation because instruments from around the world are made of bamboo.  As a result, the mark is deceptively misdescriptive.

 

CONTACT INFORMATION

 

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.    

 

 

Theodore Sotland

/Theodore Sotland/

Trademark Examining Attorney

Law Office 105

571-270-0864

Theodore.Sotland@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 December 10, 2020 for

U.S. Trademark Application Serial No. 88841338

 

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. 

 

 

Theodore Sotland

/Theodore Sotland/

Trademark Examining Attorney

Law Office 105

571-270-0864

Theodore.Sotland@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 December 10, 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.”