| To: | Yan Tan (haoyichen@archlakelaw.com) |
| Subject: | U.S. Trademark Application Serial No. 90427453 - FLAMELESS - N/A |
| Sent: | May 13, 2021 04:49:20 PM |
| Sent As: | ecom128@uspto.gov |
| Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
|
U.S. Application Serial No. 90427453
Mark: FLAMELESS
|
|
|
Correspondence Address:
|
|
|
Applicant: Yan Tan
|
|
|
Reference/Docket No. N/A
Correspondence Email Address: |
|
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 13, 2021
SEARCH OF USPTO DATABASE OF MARKS
I. PARTIAL REFUSAL – SECTION 2(e) – MARK IS DECEPTIVELY MISDESCRIPTIVE
THIS PARTIAL REFUSAL APPLIES ONLY TO
THE GOODS SPECIFIED THEREIN
The applicant has applied for registration of the word mark FLAMELESS on the Principal Register in connection with goods identified as “Candles; …Christmas tree candles; …Perfumed candles; …” in International Class 004
Regarding the first part of the test, a mark is misdescriptive when the mark merely describes a significant aspect of the goods that the goods 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. 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).
Therefore, first it must be discussed how the wording “FLAMELESS” could be descriptive of candles. Determining the descriptiveness of a mark is done in relation to an applicant’s goods, the context in which the mark is being used, and the possible significance the mark would have to the average purchaser because of the manner of its use or intended use. See In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (citing In re Bayer Aktiengesellschaft, 488 F.3d 960, 963-64, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)); TMEP §1209.01(b). Descriptiveness of a mark is not considered in the abstract. In re Bayer Aktiengesellschaft, 488 F.3d at 963-64, 82 USPQ2d at 1831. Therefore, within the context of candles, the wording “FLAMELESS” can be descriptive based on the following evidence.
According to the attached entry from the Merriam-Webster Dictionary, the wording “FLAMELESS” is defined as “having or producing no flame.” Further, according to the attached evidence from En.Wikipedia.org, BobVila.com, IndependenceStudios.WordPress.com, WayFair.com, Target.com, Lights.com, HomeDepot.com, TheSpruce.com, and Amazon.com, the wording “FLAMELESS,” as applied to candles, is used to describe a type of electronic candle in which light is emitted from a small bulb to imitate the look of a traditional flame candle without many of the hazards of an open flame. And it is plausible that the consumers quickly perusing a selection of candles and flameless candles would presume the applicant’s goods possess such a feature or characteristic of being flameless because the wording “FLAMELESS” is typically used in conjunction with “CANDLES” to signify that the candles are electronic and do not use a flame. However, in this case, it appears the goods do not in fact possess this feature or characteristic. Instead, the applicant’s goods appear to be traditional candles with a flame. This is furthered by the fact that the applicant has specifically identified candles in Class 004, not flameless candles in Class 011.
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 PotteryBarn.com, Michaels.com, Ikea.com, CrateAndBarrel.com, and BedBathAndBeyond.com shows that the reasonably prudent consumer is likely to believe the representation because often traditional candles and flameless candles are sold next to each other, with only the reference to one of the two being “FLAMELESS” being enough to discern the two from one another. Therefore, in the context of the applicant’s goods, where a consumers is perusing the applicant’s goods in a store or online, where the consumer cannot physically inspect the good directly, it is likely that even a reasonably prudent consumer could believe the misdescription that the goods are flameless.
As such, the mark FLAMELESS is refused registration on the Principal Register, pursuant to Section 2(e)(1) of the Trademark Act, for being deceptively misdescriptive. Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration. However, if applicant responds to the refusal, applicant must also respond to the requirement set forth below.
II. REQUIREMENT – REQUEST FOR INFORMATION REGARDING GOODS
(1) Fact sheets, instruction manuals, brochures, advertisements and pertinent screenshots of applicant’s website as it relates to the goods and/or services in the application, including any materials using the terms in the applied-for mark. Merely stating that information about the goods is available on applicant’s website is insufficient to make the information of record.;
(2) If these materials are unavailable, applicant should submit similar documentation for goods and services of the same type, explaining how its own product or services will differ. If the goods feature new technology and information regarding competing goods is not available, applicant must provide a detailed factual description of the goods. Factual information about the goods must make clear how they operate, salient features, and prospective customers and channels of trade. For services, the factual information must make clear what the services are and how they are rendered, salient features, and prospective customers and channels of trade. Conclusory statements will not satisfy this requirement.; and
(3) Applicant must respond to the following questions:
(a) Are any of the goods identified in the application used to make wax melts or other wax goods for purposes of fragrance release without the use of a flame?
See 37 C.F.R. §2.61(b); TMEP §§814, 1402.01(e).
Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.
III. PARTIAL REQUIREMENT – ADDITIONAL SPECIMENS REQUIRED FOR VARIED GOODS
THIS PARTIAL REQUIREMENT APPLIES ONLY TO
THE GOODS SPECIFIED THEREIN
Given the wide variety and range of goods that applicant has listed in the application, applicant must submit additional specimens to allow for a complete and accurate examination of the application and an assessment of the registrability of the subject mark, in accordance with Rule 2.61(b). 37 C.F.R. § 2.61(b); see TMEP § 904.01(a). This requirement does not apply to the goods identified as “Candles; …Christmas tree candles; …Perfumed candles; …” in International Class 004.
The applicant must support with verifiable evidence proper actual use in commerce of the mark for the goods requested below. 15 U.S.C. §§ 1051(a), 1127; 37 C.F.R. §§ 2.34(a)(1)(iv), 2.56; TMEP §§ 904, 904.07(a); cf. Grand Canyon W. Ranch LLC v. Hualapai Tribe, 78 USPQ2d 1696, 1698 (TTAB 2006) (“an applicant who bases its application on Section 1(a) (use in commerce) but who did not use the mark on some or all of the goods or services identified in the application may "cure" this problem by amending its basis to Section 1(b)”). The Trademark Act defines “commerce” as commerce that may be lawfully regulated by the U.S. Congress. See 15 U.S.C. §1127. “Use in commerce” means (1) the bona fide use of a mark in the ordinary course of trade (and not merely to reserve a right in the mark), (2) the mark is placed in any manner on the goods, packaging, tags or labels, or displays of the goods at their point of sale, and (3) the goods are actually sold or transported in commerce. See 15 U.S.C. §1127.
Please note that for every specimen submitted, applicant must clearly provide the common commercial name for the goods to which such specimen relates in order to permit proper examination of the submission.
Applicant must submit specimens demonstrating use of the mark on all of the following goods or groups of goods:
1. Candles: “Candles; Christmas tree candles; Perfumed candles.”
2. Fuel Sources: “Fuel; Tinder; Charcoal for use as fuel.”
3. Waxes and Materials for Industrial, Manufacturing and Cosmetic Purposes: “Ozokerite; Paraffin; Beeswax for use in the manufacture of candles; Beeswax for use in the manufacture of cosmetics; Carnauba wax; Industrial wax; Lanolin for use in the manufacture of cosmetics; Petroleum jelly for industrial purposes; Wax for skis; Waxes being raw materials.”
4. Wicks: “Lamp wicks; Wicks for candles”
The applicant must delete any goods for which the applicant is unable to provide specimens, or must amend the filing basis for those goods that were not in proper use as of the application filing date to an intent to use basis under Section 1(b). This option will later necessitate additional fees and filing requirements such as providing a specimen for these goods at a subsequent date.
IV. ADVISORY – UNNECESSARY TRANSLATION STATEMENT WILL NOT BE PRINTED
Applicant’s negative translation statement as to “FLAMELESS” in the application is unnecessary because this term appears in an English dictionary. TMEP §809.01(b)(i); see 37 C.F.R. §2.32(a)(9). The USPTO will disregard the translation; it will not be printed on any registration certificate that may issue from this application. TMEP §809.03.
ASSISTANCE
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.
/Daniel Travis Bice/
D. Travis Bice
Trademark Examining Attorney
Law Office 128
Telephone: (571) 272-3385
Email: Daniel.Bice@USPTO.gov
RESPONSE GUIDANCE
