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 18, 2021

 

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:

• Sections 1, 2, 3, & 45 Refusal – Failure to Function
• Section 2(e)(1) Refusal – Merely Descriptive

 

SECTIONS 1, 2, 3, & 45 REFUSAL – MERELY INFORMATIONAL

Registration is refused because the applied-for mark, CHOCOLATE, is a term that does not function as a trademark to indicate the source of applicant’s goods and to identify and distinguish them from others.  Trademark Act Sections 1, 2, 3, and 45, 15 U.S.C. §§1051-1053, 1127.  In this case, the applied-for mark is a term that is widely used in the marketplace and by those in applicant’s particular trade or industry to merely convey information about applicant’s or similar goods.  See In re Boston Beer Co., 198 F.3d 1370, 1372-74, 53 USPQ2d 1056, 1058-59 (Fed. Cir. 1999) (holding THE BEST BEER IN AMERICA for beer and ale a common claim of superiority and incapable of registration); In re Melville Corp., 228 USPQ 970, 971 (TTAB 1986) (holding BRAND NAMES FOR LESS for retail clothing store services a common promotional phrase and incapable of registration); TMEP §1202.04(a).  Specifically, the term conveys the color of the identified “food coloring” and/or the flavor of the food coloring.

 

Terms that are merely informational in nature, such as statements or laudatory phrases about goods ordinarily used in business or in a particular trade or industry, are not registrable.  See In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229 (TTAB 2010).  Determining whether a term functions as a trademark depends on how it would be perceived by the relevant public.  In re Wal-Mart Stores, Inc., 129 USPQ2d 1148, 1150 (TTAB 2019) (citing D.C. One Wholesaler, Inc. v. Chien, 120 USPQ2d 1710, 1713 (TTAB 2016)); In re Eagle Crest, Inc., 96 USPQ2d at 1229; TMEP §1202.04.  “The more commonly a [slogan or term] is used, the less likely that the public will use it to identify only one source and the less likely that it will be recognized by purchasers as a trademark [or service mark].”  In re Hulting, 107 USPQ2d 1175, 1177 (TTAB 2013) (quoting In re Eagle Crest, Inc., 96 USPQ2d at 1229); TMEP §1202.04(b).

 

The attached evidence from third party website excerpts show that this term is commonly used by those in applicant’s particular trade or industry to indicate the color of the food coloring goods and/or the color created by using the food coloring products.  (See Attached).  For example, the following third party food coloring companies use the term “chocolate” to indicate the color of the food coloring and/or the color the food coloring will produce when mixed with or applied to food: (1) Americolor Softgel Paste Food Color – Chocolate Brown; (2) Roxy & Rich Hybrid Petal Dust – Coral ; (3) & (4) Sugarpaste Crystal Color Powder Food Coloring – Chocolate and Very Dark Chocolate; (5) Colour Mill – Chocolate; (6) Mendelberg Super Gel Food Color – Chocolate Brown; (7) Roxy & Rich Fondust Hybrid Food Dust – Chocolate Brown.  (See Attached).  These third party uses of “chocolate” show that the term is commonly used to indicate the color of the food coloring, namely, “a grayish to deep reddish brown to deep grayish brown” or “of a grayish to deep reddish brown to deep grayish brown”.  (See Attached The American Heritage Dictionary Definition of “chocolate”).  

 

Further, the manner in which these uses appear supports that such use is merely informational.  The term generally appears in the middle to lower part of the goods to which they are affixed, in a place consistently used to provide information about the goods, such as the generic name of the goods, the volume and/or weight of the goods, and the color of the goods.  For example, Colour Mill displays the term “Chocolate” at the bottom of the food coloring bottle, directly above the generic wording for the goods “oil based colouring” and the volume of the goods, “20 ml”.  (See Attached).  Similarly, Mendelberg displays “Chocolate Brown” at the bottom of the bottle, directly beneath generic wording for the goods, “color concentrated gel for rolled fondant, creams and more”, and directly above the net weight of the goods.  (See Attached). 

 

Similarly, third parties use the term “chocolate” to inform consumers of the flavor of the identified food coloring goods.  (See Attached).  The wording “chocolate” means “made or flavored with chocolate”.  (See Attached Dictionary Definition).  This wording, thus, may also inform consumers of the flavor of the identified food coloring goods.  For example, Martellato offers a velvet spray that gives desserts a “velvet-like sheen” and comes in “dark chocolate” and “milk chocolate” flavors.  (See Attached).  Similarly, other food coloring products such as fondant, chocolate cake drip, and chocolate flavored mirror use the term “chocolate” to indicate the flavor of the identified goods. 

 

Because consumers are accustomed to seeing this term used in this manner, when it is applied to applicant’s goods, they would perceive it merely as informational matter indicating the color and/or flavor of the identified food coloring.  Thus, this term would not be perceived as a mark that distinguishes applicant’s goods from those of others and identifies the source of applicant’s goods.

 

An applicant may not overcome this refusal by amending the application to seek registration on the Supplemental Register or asserting a claim of acquired distinctiveness under Section 2(f).  TMEP §1202.04(d); see In re Eagle Crest, Inc., 96 USPQ2d at 1229.  Nor will submitting a substitute specimen overcome this refusal.  See TMEP §1202.04(d). 

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

Applicant should note the following additional ground for refusal.

 

SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE

Registration is refused because the applied-for mark merely describes a feature, characteristic, or function 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.

 

Applicant’s mark is CHOCOLATE for “food coloring”.

 

A mark is merely descriptive if “it immediately conveys information concerning a feature, quality, or characteristic of [an applicant’s] goods or services.”  In re N.C. Lottery, 866 F.3d 1363, 1367, 123 USPQ2d 1707, 1709 (Fed. Cir. 2017) (citing In re Bayer Aktiengesellschaft, 488 F.3d 960, 963, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)); TMEP §1209.01(b); see DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (quoting In re Abcor Dev. Corp., 588 F.2d 811, 814, 200 USPQ 215, 218 (C.C.P.A. 1978)). 

 

The determination of whether a mark is merely descriptive is made in relation to an applicant’s goods, 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).

 

In the present case, the wording “chocolate” means “a grayish to deep reddish brown to deep grayish brown” or “of a grayish to deep reddish brown to deep grayish brown” and “made or flavored with chocolate”.  (See The American Heritage Dictionary Definition of “chocolate”).   The identified goods are “food coloring”.  Accordingly, the wording “chocolate” merely describes a feature or characteristic of the goods in that they are the color “chocolate” and/or are the flavor of chocolate, and a function of the goods in that they are meant to make food the color of “chocolate”. 

 

Numerous third party food coloring manufacturers use the term “chocolate” to indicate the color of the identified goods and the color the identified goods will create when applied to and/or mixed with food.  (See Attached).  For example, Sugarpaste, Roxy & Rich, Americolor, Mendelberg, and Colour Mill each use the term “chocolate” to describe the color of the identified food coloring goods.  (See Attached).  Two major reasons for not protecting descriptive marks are (1) to prevent the owner of a descriptive mark from inhibiting competition in the marketplace and (2) to avoid the possibility of costly infringement suits brought by the trademark or service mark owner.  In re Abcor Dev. Corp., 588 F.2d 811, 813, 200 USPQ 215, 217 (C.C.P.A. 1978); TMEP §1209.  Businesses and competitors should be free to use descriptive language when describing their own goods to the public in advertising and marketing materials.  See In re Styleclick.com Inc., 58 USPQ2d 1523, 1527 (TTAB 2001).

 

Similarly, third parties use the term “chocolate” in connection with food coloring goods and related goods to indicate the flavor of such goods.  For example, the attached website excerpts for “chocolate flavored mirror” and “velvet spray” apply a sheen of edible coloring to food and both use the wording “chocolate” to indicate the flavoring of the identified goods.  (See Attached).  The flavor of food products has been held merely descriptive of such food products.  In re Andes Candies Inc., 178 USPQ 156 (C.C.P.A. 1973) (holding CRÈME DE MENTHE merely descriptive of laminated chocolate mint candy squares); In re Int’l Salt Co., 171 USPQ 832 (TTAB 1971) (holding CHUNKY CHEESE merely descriptive of cheese-flavored salad dressing); see A. J. Canfield Co. v. Honickman, 808 F.2d 291, 1 USPQ2d 1364 (3d Cir. 1986) (holding CHOCOLATE FUDGE generic for chocolate fudge flavored diet soda); TMEP §1209.01(b).

 

Finally, “chocolate” also describes the purpose and use of the identified “food coloring” goods.  Specifically, numerous companies make “candy colors” that are used for coloring “chocolate candy”.  (See Attached, e.g., Kerekes website, stating “oil candy colors are great for chocolate candy coloring”). 

 

Therefore, the applied-for mark is merely descriptive of the identified goods. 

 

In addition to being merely descriptive, the applied-for mark appears to be generic in connection with the identified goods.  “A generic mark, being the ‘ultimate in descriptiveness,’ cannot acquire distinctiveness” and thus is not entitled to registration on either the Principal or Supplemental Register under any circumstances.  In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 1336, 116 USPQ2d 1262, 1264 (Fed. Cir. 2015) (quoting H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 989, 228 USPQ 528, 530 (Fed. Cir. 1986)); see TMEP §§1209.01(c) et seq., 1209.02(a).  Therefore, the trademark examining attorney cannot recommend that applicant amend the application to proceed under Trademark Act Section 2(f) or on the Supplemental Register as possible response options to this refusal.  See TMEP §1209.01(c).

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.

 

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.    

 

 

/gaynne g zimmerman/

Trademark Examining Attorney

Law Office 120

(571) 272–8836

gaynne.zimmerman@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 May 18, 2021 for

U.S. Trademark Application Serial No. 90398194

 

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. 

 

 

/gaynne g zimmerman/

Trademark Examining Attorney

Law Office 120

(571) 272–8836

gaynne.zimmerman@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 May 18, 2021, 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.”