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:  March 08, 2022

 

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues 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:

 

• Section 2(e)(1) Refusal - Merely Descriptive
• Identification and Classification of Goods and Services
• Multiple-Class Application Requirements

 

Section 2(e)(1) Refusal - Merely Descriptive

 

Applicant seeks to register the mark HOUSE BRAND DENTISTRY for “Full line of dental care products, dental tools, dental care preparations, dental materials, dental appliances, non-medicated dental preparations, medicated dental preparations, and dental instruments for human use; retail store services featuring the aforementioned goods; wholesale store services featuring the aforementioned goods; online store services featuring the aforementioned goods” in International Class 10.

 

Registration is refused because the applied-for mark merely describes a feature,  characteristic, purpose, or function of applicant’s goods and/or services.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

 

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods and/or services.  TMEP §1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)). 

 

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).

 

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., 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, “house brand” is defined as “A brand name used exclusively by a retailer (or a selected group of retailers) for a product or line of products that are typically sold for prices lower than that of comparable items with manufacturer brand names” and “A product bearing a brand name used by the retailer and sold for a lower price”.  The word “dentistry” is defined as “A product bearing a brand name used by the retailer and sold for a lower price”.  See attached definitions from lexico.com.  Applicant’s goods and services include “Full line of dental care products, dental tools, dental care preparations, dental materials, dental appliances, non-medicated dental preparations, medicated dental preparations, and dental instruments for human use; retail store services featuring the aforementioned goods; wholesale store services featuring the aforementioned goods; online store services featuring the aforementioned goods”.  Therefore, the wording HOUSE BRAND DENTISTRY merely describes applicant’s goods and services, which are dental materials, tools, appliances and preparations used to treat diseases of the teeth and gums that are sold under a particular product line/brand name/house brand, as well as retail and wholesale store services that feature dental materials, tools, appliances and preparations used to treat diseases of the teeth and gums that are sold under a particular product line/brand name/house brand.

 

As the wording HOUSE BRAND DENTISTRY is merely descriptive of applicant’s goods and services, the applied-for-mark as a whole is merely descriptive and is not entitled to registration.

 

Advisory - Supplemental Register

 

Although an amendment to the Supplemental Register would normally be an appropriate response to the Section 2(e)(1) refusal, such a response is not appropriate in the present case.  The instant application was filed under Trademark Act Section 1(b) and is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use meeting the requirements of 37 C.F.R. §2.76 has been timely filed.  37 C.F.R. §2.47(d); TMEP §§816.02, 1102.03.

 

If applicant files an acceptable allegation of use and also amends to the Supplemental Register, the application effective filing date will be the date applicant met the minimum filing requirements under 37 C.F.R. §2.76(c) for an amendment to allege use.  TMEP §§816.02, 1102.03; see 37 C.F.R. §2.75(b).  In addition, the undersigned trademark examining attorney will conduct a new search of the USPTO records for conflicting marks based on the later application filing date.  TMEP §§206.01, 1102.03.

 

To amend an intent-to-use application under Trademark Act Section 1(b) to use in commerce, an applicant must file, prior to approval of the mark for publication, an acceptable amendment to allege use.  See 15 U.S.C. §1051(c); 37 C.F.R. §2.76; TMEP §§806.01(b), 1103.  An amendment to allege use must satisfy the following requirements:

 

(1)        STATEMENTS:  The following statements:  “The applicant is the owner of the mark sought to be registered.” and “The applicant is using the mark in commerce on or in connection with all the goods/services in the application or notice of allowance, or as subsequently modified.”

 

(2)        DATES OF FIRST USE:  The date of first use of the mark anywhereon or in connection with the goods and/or services, and the date of first use of the mark in commerceas a trademark or service mark.  See more information about dates of use.

 

(3)        GOODS AND/OR SERVICES:  The goods and/or services specified in the application.

 

(4)        SPECIMEN:  A specimen showing how applicant uses the mark in commerce for each class of goods and/or services for which use is being asserted.  If a single specimen supports multiple classes, applicant should indicate which classes the specimen supports rather than providing multiple copies of the same specimen.  See more information about specimens.

 

(5)        FEE(S):  A filing fee for each international class of goods and/or services for which use is being asserted (find current fee information).

 

(6)        VERIFICATION:  Verification of (1) through (4) above in an affidavit or signed declaration under 37 C.F.R. §2.20.  See more information about verification.

 

See 37 C.F.R. §2.76(b); TMEP §1104.08.

 

An amendment to allege use may be filed online via the Trademark Electronic Application System (TEAS).  Filing an amendment to allege use is not considered a response to an Office action.  37 C.F.R. §2.76(h); TMEP §1104.  An applicant must file a separate response to any outstanding Office action.  TMEP §1104; see 37 C.F.R. §2.76(h). 

 

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 requirements set forth below.

 

Identification and Classification of Goods and Services

 

The identification of goods and services is indefinite and must be clarified for the following reasons: 

 

• Please note that semicolons have been placed in the suggestion below in order to differentiate each distinct good in the identification.
• The wording “Full line of dental care products” is overbroad and can encompass goods in multiple international classes.  For example, this wording can encompass non-medicated dental rinses in Class 3, medicated dental rinses in Class 5, teeth protectors for dental purposes in Class 10, and dental floss in Class 21, amongst many other goods.  Therefore, applicant must specify the type of goods and classify the goods in the correct international class.  Applicant must also comply with the multiple-class application requirements discussed below.
• The wording “dental tools” must specify the type of Class 10 dental tools.
• The wording “dental care preparations” is overbroad and can encompass goods in multiple international classes.  For example, this wording can encompass non-medicated dental preparations in the nature of non-medicated dental rinses in Class 3, and medicated dental preparations in the nature of medicated dental rinses in Class 5, amongst other goods.  Therefore, applicant must specify the type of goods and classify the goods in the correct international class.  Applicant must also comply with the multiple-class application requirements discussed below.
• The wording “dental materials” is overbroad and can encompass goods in multiple international classes.  For example, this wording can encompass materials for dental fillings in Class 5 and plastic material for producing, relining and repair of dental prostheses in Class 10, amongst other goods.  Therefore, applicant must specify the type of goods and classify the goods in the correct international class.  Applicant must also comply with the multiple-class application requirements discussed below.
• The wording “dental appliances” must specify the type of Class 10 dental appliances.
• The wording “non-medicated dental preparations” must specify the type of non-medicated dental preparations.  Also, these goods are properly classified in Class 3.  Therefore, applicant must add Class 3 to the application and classify the goods in the correct international class, or otherwise must delete these goods from the application.  Applicant must also comply with the multiple-class application requirements discussed below.
• The wording “medicated dental preparations” must specify the type of medicated dental preparations.  Also, these goods are properly classified in Class 5.  Therefore, applicant must add Class 5 to the application and classify the goods in the correct international class, or otherwise must delete these goods from the application.  Applicant must also comply with the multiple-class application requirements discussed below.
• The wording “dental instruments for human use” must specify the type of Class 10 dental instruments.
• The wording “retail store services featuring the aforementioned goods; wholesale store services featuring the aforementioned goods; online store services featuring the aforementioned goods” is currently classified in Class 10.  However, these services are properly classified in Class 35.  Therefore, applicant must add Class 35 to the application and reclassify these goods in the correct international class.  Also, these services must list the goods/products featured as part of the retail store and wholesale store services (see suggestion below).

 

See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Applicant may adopt the following identification, if accurate (changes in bold):

 

International Class 3: Full line of dental care products, namely, {indicate name or type of Class 3 dental care products, e.g., non-medicated dental rinses, etc.}; dental care preparations, namely, non-medicated dental preparations in the nature of {indicate name or type of Class 3 non-medicated dental preparations, e.g., non-medicated dental rinses, etc.}; non-medicated dental preparations, namely, {indicate name or type of Class 3 non-medicated dental preparations, e.g., non-medicated dental rinses, etc.}

 

International Class 5: Full line of dental care products, namely, {indicate name or type of Class 5 dental care products, e.g., medicated dental rinses, etc.}; dental care preparations, namely, medicated dental preparations in the nature of {indicate name or type of Class 5 medicated dental preparations, e.g., medicated dental rinses, etc.}; dental materials, namely, {specify the type of Class 5 dental materials, e.g., materials for dental fillings, etc.}; medicated dental preparations, namely, {indicate name or type of Class 5 medicated dental preparations, e.g., medicated dental rinses, etc.}

 

International Class 10: Full line of dental care products, namely, {indicate name or type of Class 10 dental care products, e.g., teeth protectors for dental purposes, etc.}; dental tools, namely, {specify the type of Class 10 dental tools, e.g., drills for dental use, etc.}; dental materials, namely, {specify the type of Class 10 dental materials, e.g., plastic material for producing, relining and repair of dental prostheses, etc.}; dental appliances, namely, {specify the type of Class 10 dental appliances, e.g., ultrasound appliances for dental use, etc.}; dental instruments for human use, namely, {specify Class 10 items, e.g., picks, burrs, mirrors}

 

International Class 21: Full line of dental care products, namely, {indicate name or type of Class 21 dental care products, e.g., dental floss, etc.}

 

International Class 35: retail store services featuring dental care products, dental tools, dental care preparations, dental materials, dental appliances, non-medicated dental preparations, medicated dental preparations, and dental instruments for human use; wholesale store services featuring dental care products, dental tools, dental care preparations, dental materials, dental appliances, non-medicated dental preparations, medicated dental preparations, and dental instruments for human use; online store services featuring dental care products, dental tools, dental care preparations, dental materials, dental appliances, non-medicated dental preparations, medicated dental preparations, and dental instruments for human use

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  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.

 

Multiple-Class Application Requirements

 

The application identifies goods and services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(1)        List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)        Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least five classes; however, applicant submitted a fee sufficient for only one class.  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).

 

For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.

 

The fee for adding classes to a TEAS Standard application is $350 per class.  See 37 C.F.R. §2.6(a)(1)(iii).  For more information about adding classes to an application, see the Multiple-class Application webpage.

 

Response Options

 

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.    

 

 

/Jessica Hilliard/

Jessica Hilliard

Examining Attorney, Law Office 120

571-272-4031

Jessica.Hilliard@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 March 08, 2022 for

U.S. Trademark Application Serial No. 90774441

 

A USPTO examining attorney has reviewed your trademark application and issued an Office action.  You must respond to this Office action in order to avoid your application abandoning.  Follow the steps below.

 

(1)  Read the Office action.  This email is NOT the Office action.

 

(2)  Respond to the Office action by the deadline using the Trademark Electronic Application System (TEAS).  Your response must be received by the USPTO on or before 11:59 p.m. Eastern Time of the last day of the response period.  Otherwise, your application will be abandoned.  See the Office action itself regarding how to respond.

 

(3)  Direct general questions about using USPTO electronic forms, the USPTO website, the application process, the status of your application, and whether there are outstanding deadlines to the Trademark Assistance Center (TAC).

 

After reading the Office action, address any question(s) regarding the specific content to the USPTO examining attorney identified in the Office action.

 

 

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 to ensure you receive important USPTO notices about your application.

 

·         Beware of trademark-related scams.  Protect yourself from people and companies that may try to take financial advantage of you.  Private companies may call you and pretend to be the USPTO or may send you communications that resemble official USPTO documents to trick you.  We will never request your credit card number or social security number over the phone.  And all official USPTO correspondence will only be emailed from the domain “@uspto.gov.”  Verify the correspondence originated from us by using your Serial Number in our database, TSDR, to confirm that it appears under the “Documents” tab, or contact the Trademark Assistance Center.

 

·         Hiring a U.S.-licensed attorney.  If you do not have an attorney and are not required to have one under the trademark rules, we encourage you to hire a U.S.-licensed attorney specializing in trademark law to help guide you through the registration process.  The USPTO examining attorney is not your attorney and cannot give you legal advice, but rather works for and represents the USPTO in trademark matters.