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:  November 22, 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 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.

 

SUMMARY OF ISSUES:

 

• Identification/classification of goods/services
• Disclaimer requirement
• Entity/Citizenship clarification
• Description of the mark – Color

 

IDENTIFICATION OF GOODS

The identification of goods is indefinite and must be clarified because the nature of the goods cannot be ascertained and accurately classified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

The wording “etc” in the identification of goods is indefinite and must be clarified by (1) specifying the common commercial or generic name for these goods, or (2) deleting this wording.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03(a).  This wording is an open-ended “catch-all” word or phrase (e.g., “etc.,” “and other similar goods,” “and related goods”) that is not acceptable because it fails to identify specific goods.  See TMEP §1402.03(a).

 

In an identification, an applicant must use the common commercial or generic name for the goods, be specific and all-inclusive, and avoid using indefinite words or phrases.  TMEP§§1402.01, 1402.03(a).  Further, applicant may amend the identification to list only those items that are within the scope of the goods set forth in the initial application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §§1402.06 et seq., 1402.07.  Scope is generally determined by the ordinary meaning of the wording in the identification.  TMEP §1402.07(a).

 

Applicant may adopt the following identification, if accurate: 

 

“Dietary and nutritional supplements for endurance sports; Herbal supplements for health and fitness; Nutritional supplements; Nutritional supplements for health and fitness; Nutritional supplements in the form of powders and capsules; Nutritional supplements, namely, carbohydrates in powdered form; Powdered nutritional supplement drink mix; Protein supplements.”

                        International Class 5.

 

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.

 

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).

 

DISCLAIMER REQUIRED

Applicant must disclaim the wording “MUSCLE” and “all the wording in the mark> because it is merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services.  See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a). 

 

Muscle is defined as “a body tissue consisting of long cells that contract when stimulated and produce motion.”  See attached definition from http://www.merriam-webster.com/dictionary/muscle.  Laboratory is defined as “a place equipped for experimental study in a science or for testing and analysis; : a place providing opportunity for experimentation, observation, or practice in a field of study.”  See attached definition from http://www.merriam-webster.com/dictionary/laboratory.  The applicant acts as a laboratory providing health, fitness, and protein supplements for muscles.  Thus, the wording merely describes significant features of applicant’s goods, i.e. its function and source.

 

Applicant may respond to this issue by submitting a disclaimer in the following format: 

 

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

 

For an overview of disclaimers and instructions on how to provide one using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage. 

 

ISSUE REGARDING APPLICANT’S ENTITY TYPE

The names of at least two different individuals appear in the section of the application intended for the trademark owner’s name; however, the legal entity is set forth as a limited liability company.  Applicant must clarify this inconsistency.  See 37 C.F.R. §§2.32(a)(2), (a)(3)(i)-(ii), 2.61(b); TMEP §803.03(d), (h).

 

If these individuals are applying together as joint owners/applicants, they must amend the legal entity from “limited liability company” to “individual” and each joint applicant must indicate his or her country of citizenship.  See 37 C.F.R. §2.32(a)(3)(i); TMEP §803.03(d).  Alternatively, if applicant is a limited liability company, applicant must set forth its correct name and U.S. state or foreign country under whose laws it was established.  37 C.F.R. §2.32(a)(3)(ii); TMEP §803.03(h).

 

If, in response to the above request, applicant provides information indicating that it is not the owner of the mark, registration will be refused because the application was void as filed.  See 37 C.F.R. §2.71(d); TMEP §§803.06, 1201.02(b).  An application must be filed by the party who owns or is entitled to use the mark as of the application filing date.  See 37 C.F.R. §2.71(d); TMEP §1201.02(b).

 

DESCRIPTION OF MARK REQUIRED

Applicant must provide an amended description of the mark that includes all the literal and design elements colors shown in the mark.  Specifically, the following elements have been omitted:  barbells and facial features.

 

A complete description must identify all the literal and design elements in the mark and specify where the colors appear in those elements.  See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §§807.07(a) et seq. 

 

The following description is suggested, if accurate:

 

The mark consists of wording MUSCLE NERDS in yellow and black, above a design of a muscular bodybuilder in yellow, gold, white and black, with a yellow emoji head wearing black glasses, with blue, black and white eyes and two white front teeth, holding black and white barbells, all over the wording LABORATORIES in yellow and black.  The entire mark is on a black background.

 

PLEASE NOTE:  Applicant is encouraged to telephone or email (Tracy.Cross@uspto.gov) the trademark examining attorney to resolve the issues raised above, if a new class is not being added.  Formal responses are not accepted via email.  However, in this case, the examining attorney will issue an examiner’s amendment based upon the applicant’s informal email communication.

 

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.    

 

 

/Tracy Cross/

Examining Attorney

Law Office 109

(571) 272-9271

Tracy.Cross@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 November 22, 2020 for

U.S. Trademark Application Serial No. 90079151

 

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. 

 

 

/Tracy Cross/

Examining Attorney

Law Office 109

(571) 272-9271

Tracy.Cross@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 November 22, 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.”