UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

 

ISSUE/MAILING DATE: 11/22/2014

 

 

THIS IS A FINAL ACTION.

 

 

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on November 7, 2014.

 

In a previous Office Action dated November 5, 2013, the trademark examining required the applicant to satisfy the following requirement: disclaim descriptive wording in the mark.  On April 17, 2014, the applicant responded, disclaimed the wording “FROZEN YOGURT,” and submitted a Section 2(f) claim of acquired distinctiveness based on use and based on more than two thousand pages of evidence submitted. 

 

On May 7, 2014, the examining attorney issued an Office Action that rejected the Section 2(f) claim for Class 30 and required the applicant to disclaim the descriptive wording in Class 30.  On November 7, 2014, the applicant responded, amended the identification of goods and argued against the requirement.

 

Further, the trademark examining attorney maintains and now makes FINAL requirement in the summary of issues below.  See 37 C.F.R. §2.64(a); TMEP §714.04.

 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

 

• Disclaimer – Partial Requirement for Class 30

 

 

PARTIAL ABANDONMENT NOTICE

 

If the applicant does not respond to this Office action within the six-month period for response, the Class 30 goods will be deleted from the application.

 

37 C.F.R. §2.65(a).

 

 

DISCLAIMER

 

THIS PARTIAL REQUIREMENT APPLIES TO CLASS 30 ONLY

 

Applicant must disclaim the wording “TUTTI FRUTTIO FROZEN YOGURT” in Class 30 because it merely describes a feature or characteristic, specifically a flavor, of applicant’s goods, and thus is an unregistrable component of the mark.  See 15 U.S.C. §§1052(e)(1), 1056(a); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); TMEP §§1213, 1213.03(a). 

 

A “disclaimer” is a statement in the application record that an applicant does not claim exclusive rights to an unregistrable component of the mark; a disclaimer of unregistrable matter does not affect the appearance of the mark or physically remove disclaimed matter from the mark.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 978, 144 USPQ 433, 433 (C.C.P.A. 1965); TMEP §1213.  An unregistrable component of a mark includes wording and designs that are merely descriptive of an applicant’s goods.  15 U.S.C. §1052(e); see TMEP §§1209.03(f), 1213.03 et seq.  Such words or designs need to be freely available for other businesses to market comparable goods or services and should not become the proprietary domain of any one party.  See Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 1560, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991); In re Aug. Storck KG, 218 USPQ 823, 825 (TTAB 1983).

 

The applicant has voluntarily disclaimed the wording “FROZEN YOGURT” and therefore acknowledges its descriptive nature.  The term “tutti frutti” refers to a flavor in ice cream and frozen yogurt, as shown by the internet evidence from several dictionaries attached to the previous Office Action.  Therefore, as it is a flavor, it is highly descriptive and possibly generic.  The name of a key ingredient, characteristic, or feature of goods may be generic for those goods.  See A.J. Canfield Co. v. Honickman, 808 F.2d 291, 292, 1 USPQ2d 1364, 1365 (3d Cir. 1986) (holding CHOCOLATE FUDGE generic for diet sodas); TMEP §§1209.01(c) et seq.  Thus, a term does not need to be the name of a specific product to be found generic; flavors may also be generic.

 

The applicant cannot have exclusive use of the term for a flavor of frozen yogurt or ice cream due to competitive need.  The term “tutti frutti” refers to a flavor of ice cream or frozen yogurt that is used commonly in the marketplace as shown by the internet evidence attached to the previous Office Action from www.leopoldsicecream.com (sells tutti frutti-flavored ice cream), www.trevisrothwell.com (discusses origin of tutti frutti-flavored ice cream and provides recipes), www.cafejohnsonia.com (recipe to make tutti frutti-flavored ice cream), www.acananortheast.com (sells tutti frutti-flavored extract for ice cream, soft serve and frozen beverages),  www.clumpies.com (sells tutti frutti-flavored ice cream), www.delspopcorn.com (sells tutti frutti-flavored frozen yogurt), www.loobelles.com (same), www.marshfield-icecream.co.uk (sells tutti frutti-flavored ice cream), www.moosplace.com (same), www.nastosicecream.com (same), www.paguciugo.com (sells tutti frutti-flavored gelato and sorbetti), and www.yoberri.com (sells tutti frutti-flavored frozen yogurt).

 

It also refers generally to a flavor used in other types of goods, as shown by the internet evidence attached  to the previous Office Action from www.urbful.com (sells tutti frutti-flavored gum), www.walmart.com (sells tutti frutti-flavored allergy medicine), www.hawaiianshavedice.com (sells tutti frutti-flavored shaved ice and snow cone syrup), www.hoosierhomemade.com (recipe for tutti frutti-flavored snow cone cupcakes), www.newportflacors.com (sells organic tutti frutti flavor concentrate), www.suttonbaytrading.com (sells tutti frutti-flavored extract), and www.sciencelab.com (sells tutti frutti flavoring).

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).

The applicant argues that soft serve frozen yogurt cannot truly be tutti frutti flavored because it cannot have the pieces of fruit in it, and therefore the wording is not descriptive.  The examining attorney disagrees.  The type of frozen yogurt is not probative on whether the wording is descriptive.  Tutti fruit is a flavor, which is highly descriptive of or generic for the goods, as frozen yogurt is sold in this flavor.  The presence or absence of the fruit pieces does not determine the flavor name.  As a result, a Section 2(f) claim is not acceptable.  The evidence referenced above demonstrates that tutti frutti is indeed a flavor of frozen yogurt that is commonly sold to consumers.

 

An applicant may not claim exclusive rights to terms that others may need to use to describe their goods in the marketplace.  See Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 1560, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991); In re Aug. Storck KG, 218 USPQ 823, 825 (TTAB 1983).  A disclaimer of unregistrable matter does not affect the appearance of the mark; that is, a disclaimer does not physically remove the disclaimed matter from the mark.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 978, 144 USPQ 433, 433 (C.C.P.A. 1965); TMEP §1213. 

 

If applicant does not provide the required disclaimer, the USPTO may refuse to register the entire mark.  See In re Stereotaxis Inc., 429 F.3d 1039, 1040-41, 77 USPQ2d 1087, 1088-89 (Fed. Cir. 2005); TMEP §1213.01(b).

 

Applicant should submit a disclaimer in the following standardized format:

 

No claim is made to the exclusive right to use “TUTTI FRUTTI FROZEN YOGURT” in Class 30 apart from the mark as shown.

 

For an overview of disclaimers and instructions on how to satisfy this disclaimer requirement online using the Trademark Electronic Application System (TEAS) form, please go to http://www.uspto.gov/trademarks/law/disclaimer.jsp.

 

RESPONSE OPTIONS FOR PARTIAL REQUIREMENT

 

The stated requirement refers to Class 30 only, and does not bar registration for the classes.  The applicant may respond to the stated refusal by submitting evidence and arguments against the refusal.  Additionally, the applicant may respond by doing one of the following:

 

(1)  amending or deleting the goods to which the refusal pertains;

 

(2)  filing a request to divide out the goods that have not been refused registration, so that the mark may be published for opposition for those goods or services to which the refusal does not pertain.  See generally TMEP §§1110 et seq. and 1403.03 (regarding the requirements for filing a request to divide); or

 

(3)  amending the basis for the goods identified in the refusal, if appropriate.  (The basis cannot be changed for applications filed under Trademark Act Section 66(a).  TMEP §1904.01(a).)

 

RESPONSE GUIDELINES

If the applicant fails to respond to this final action within six months of the mailing date, the application will be partially abandoned as described above. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a). The applicant may respond to this final Office action by:

(1) Submitting a response that fully satisfies all outstanding requirements, if feasible; and/or

(2) Filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class.

37 C.F.R. §§2.6(a)(18) and 2.64(a); TBMP Chapter 1200; TMEP §714.04.

In certain rare circumstances, a petition to the Director may be filed pursuant to 37 C.F.R. §2.63(b)(2) to review a final Office action that is limited to procedural issues. 37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b), TBMP §1201.05; TMEP §1704 (explaining petitionable matters). The petition fee is $100. 37 C.F.R. §2.6(a)(15).

 

 

 

 

/Jillian R. Cantor/

Examining Attorney

Law Office 117

(571) 272-6564

Jillian.Cantor@uspto.gov

 

TO RESPOND TO THIS LETTER:  Go to http://www.uspto.gov/trademarks/teas/response_forms.jsp.  Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

 

All informal e-mail communications relevant to this application will be placed in the official application record.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.uspto.gov/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199.  For more information on checking status, see http://www.uspto.gov/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.uspto.gov/trademarks/teas/correspondence.jsp.