United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  November 08, 2019

 

The Office has received the applicant’s communication filed on October 7, 2019.  The assigned examining attorney has reviewed the prosecution history of the referenced application and determined the following.

 

Prosecution History

In a previous Office Action, the examining attorney: (1) refused registration pursuant to Section 2(e)(1).  In addition, the applicant was required to: (1) amend the identification of services.

 

In its response, the applicant: (1) added International Class 039 to the application, (2) amended the identification for International Class 035, (3) added the applicant’s attorney bar information, and (4) claimed the Section 2(e)(1) refusal was improper because the “mark is a unique telescoped mark of two admittedly descriptive terms that form an incongruous, unique unitary mark”.[1]

 

The applicant’s addition of International Class 039, amended identification of services for International Class 035 and bar information for the applicant’s appointed attorney are all accepted and made part of this application.  Accordingly, the identification requirement is hereby deemed SATISFIED. 

 

The applicant’s arguments concerning the applicability of the Section 2(e)(1) refusal has been carefully reviewed but found unpersuasive.  Accordingly, the examining attorney issues this FINAL OFFICE ACTION noting the following.

 

Application Refused—FINAL REFUSAL--Section 2(e)(1)—Mark Is Merely Descriptive

Previously, the examining attorney refused registration on the Principal Register because the proposed mark merely describes a feature of the services identified in the application.  Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1); TMEP §§1209.01(b), 1209.03 et seq.

 

The applicant’s attorney, claims the “mark is a unique telescoped mark of two admittedly descriptive terms that form an incongruous, unique unitary mark”.[2]  Moreover, the applicant’s legal conclusion has no evidentiary support and directly contradicts the facts of this case and the relevant case law.  Accordingly, the prior Section 2(e)(1) refusal is CONTINUED and made FINAL.

 

Case Law Governing Whether a Mark is Descriptive Under Section 2(e)(1)

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s identified goods and 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 identified goods and 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); see, e.g., In re Polo Int’l Inc., 51 USPQ2d 1061, 1062-63 (TTAB 1999) (finding DOC in DOC-CONTROL would refer to the “documents” managed by applicant’s software rather than the term “doctor” shown in a dictionary definition); In re Digital Research Inc., 4 USPQ2d 1242, 1243-44 (TTAB 1987) (finding CONCURRENT PC-DOS and CONCURRENT DOS merely descriptive of “computer programs recorded on disk” where the relevant trade used the denomination “concurrent” as a descriptor of a particular type of operating system).  “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 question is not whether someone presented only with the mark could guess what the goods and/or services are, but “whether someone who knows what the goods and[/or] services are will understand the mark to convey information about them.”  DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012) (quoting In re Tower Tech, Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002)); In re Mueller Sports. Med., Inc., 126 USPQ2d 1584, 1587 (TTAB 2018).

 

The applicant applied to register BEERVAN for “computerized on-line ordering services in the field of beer” and “transport and delivery of beer for others”.

 

The Term “BEERVAN” is Descriptive

As noted previously, the term BEER refers to “a fermented alcoholic beverage brewed from malt, usually flavored with hops”.[3]  The term VAN refers to “a covered or enclosed truck or wagon often used for transporting goods or livestock”.[4]

 

While acknowledging the proposed mark consists “of two admittedly descriptive terms” the applicant claims, without any argument or explanation, the mark is “a unique telescoped mark” that “form[s] an incongruous, unique unitary mark”.[5]  The applicant is mistaken—the proposed mark is not telescoped.  A telescoped mark is one that comprises two or more words that share letters (e.g., HAMERICAN, ORDERECORDER, SUPERINSE, VITAMINSURANCE, and POLLENERGY); the two terms comprising the proposed mark, BEER and VAN, do not share any letters between them.  Furthermore, even if the proposed mark was a telescoped mark, such terms can be found descriptive. See In re Omaha Nat’l Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987) (affirming refusal to register FIRSTIER and design for banking services in the absence of a disclaimer of "FIRST TIER," in view of evidence that the term describes a class of banks); TMEP §1213.05(a)(i).

 

Furthermore, the applicant’s assertion that the proposed mark “form[s] an incongruous, unique unitary mark” is specious at best.^[6]  While incongruity in a mark is “one of the accepted guideposts in the evolved set of legal principles for discriminating the suggestive from the descriptive mark,” there is no incongruity in the proposed mark. In re Shutts, 217 USPQ 363, 364–5 (TTAB 1983) (SNO-RAKE held not merely descriptive of a snow-removal hand tool).  An incongruity is something “lacking in harmony” or “incompatible”.^[7]  Unlike the obvious incompatibility between the terms URBAN SAFARI or SQUARE WHEEL, the terms BEER and VAN are not inherently contradictory or incompatible; accordingly, the proposed mark has no such incongruity.

 

The combination of terms comprising the mark presumably describe, name, or inform the public about certain characteristics and features of the applicant’s services.  Taken as a whole, the mark immediately informs consumers that the applicant’s ordering and delivery services feature a covered or enclosed truck or wagon used for transporting fermented alcoholic beverage brewed from malt and flavored with hops.  Indeed, the applicant’s own website notes that “you place the order and we deliver the beer”.^[8]  Moreover, it appears that the applicant is not the only entity that uses the term BEER VAN to identify its services.  As the attached article from Outside notes, HooDoo Brewery has a modified van it uses to the deliver beer to customers.[9]  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 and/or services to the public in advertising and marketing materials.  See In re Styleclick.com Inc., 58 USPQ2d 1523, 1527 (TTAB 2001).  Allowing the applicant exclusive use of a term that other competitors also use to denote the same or highly similar services would necessarily frustrate such objectives.

 

A term need not describe all of the purposes, functions, characteristics or features of the services to be merely descriptive.  In re Dial-a-Mattress Operating Corp., 240 F.3d 1341, 1346, 57 U.S.P.Q.2d 1807 (Fed. Cir. 2001).  It is enough if the term describes only one significant function, attribute or property.  In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004) (“[A] mark may be merely descriptive even if it does not describe the ‘full scope and extent’ of the applicant’s goods or services.”) (quoting In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1346, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001)).  Because the evidence in this case clearly shows that the proposed mark when taken as a whole immediately denotes without conjecture or speculation, a significant characteristic or feature of the services the applicant will provide, the mark is descriptive of those identified services.  Accordingly, the prior refusal to register the proposed mark under Section 2(e)(1) of Trademark Act because the proposed mark identifies a feature or characteristic of the services identified in the application, is CONTINUED and made FINAL.

 

Options for Overcoming the Statutory Refusal Under Section 2(e)(1)

The applied-for mark has been refused registration on the Principal Register.  Applicant may respond to the refusal by submitting evidence and arguments in support of registration and/or by amending the application to seek registration on the Supplemental Register.  See 15 U.S.C. §1091; 37 C.F.R. §§2.47, 2.75(a); TMEP §§801.02(b), 816.  Amending to the Supplemental Register does not preclude applicant from submitting evidence and arguments against the refusal(s).  TMEP §816.04.

 

Please Note:  A mark in an application under Trademark Act Section 1(b) is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use under 37 C.F.R. §2.76 has been filed.  37 C.F.R. §§2.47(d), 2.75(b); TMEP §§815.02, 1102.03.  When a Section 1(b) application is successfully amended 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 the amendment to allege use.  TMEP §§816.02, 1102.03; see 37 C.F.R. §2.75(b).  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). 

 

Applicant’s Response

There is no required format or form for responding to an Office action.  Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond by providing one or both of the following:

 

(1)       a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements and/or resolves all outstanding refusals; and/or

 

(2)       an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 per class.

 

37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.

 

In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues.  TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  There is a fee required for filing a petition.  37 C.F.R. §2.6(a)(15).

 

Responses to Office actions must be properly signed.  See 37 C.F.R. §§2.62(b), 2.193(e)(2); TMEP §§712, 712.01.  If an applicant is not represented by a U.S.-licensed attorney, the response must be signed by the individual applicant or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner).  See 37 C.F.R. §2.193(e)(2)(ii); TMEP §§611.03(b), 611.06(b)-(h), 712.01.  In the case of joint applicants, all must sign.  37 C.F.R. §2.193(e)(2)(ii); TMEP §611.06(a). 

 

If an applicant is represented by a U.S.-licensed attorney authorized to practice before the USPTO, the attorney must sign the response.  37 C.F.R. §2.193(e)(2)(i); TMEP §§611.03(b), 712.01.  The only attorneys who may sign responses are (1) attorneys in good standing with a bar of the highest court of any U.S. state or territory, or (2) Canadian trademark attorneys or agents reciprocally recognized by the USPTO’s Office of Enrollment and Discipline (OED) who are appointed in connection with a U.S.-licensed attorney.  See 37 C.F.R. §§2.17(a), 11.14(a), (c), (e).  Foreign attorneys, other than recognized Canadian trademark attorneys or agents, do not have authority to sign responses.  See 37 C.F.R. §§2.17(e), 11.14(c)(1), (e).

 

If an applicant is initially represented by an attorney, and then later retains another attorney from a different firm, the newly retained attorney may not sign responses until the applicant files a new power and/or revocation of attorney.  See 37 C.F.R. §2.18(a)(7); TMEP §604.03.

 

TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application.  See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820.  TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.  However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.  If the applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.uspto.gov/teas/eFilingTips.htm and email technical questions to TEAS@uspto.gov.

 

If the applicant or its appointed attorney has any questions or needs assistance in responding to this final action, please telephone the assigned examining attorney.

 

/Michael Tanner/

Michael Tanner

Trademark Attorney

Law Office 119

Telephone: 571-272-9706

Email:  Michael.Tanner@uspto.gov

 

How to respond.  Click to file a response to this final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB)

 

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.