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.  A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.

 

 

ISSUE/MAILING DATE: 5/25/2018

 

This action is in response to applicant’s communication of May 3, 2018.

 

In a Final office action dated November 3, 2017, the trademark examining attorney maintained and finally refused the applied-for mark under Trademark Act Section 2(e)(1) as merely descriptive of the identified goods.

 

In applicant’s May 3, 2018 Request for Reconsideration, applicant submitted arguments in response to the refusal and amended the application to the Supplemental Register in the alternative.  The amendment to the Supplemental Register creates a new issue, necessitating this new non-final Action.

 

Further, the examining attorney has considered applicant’s arguments and, for the reasons discussed herein, is not persuaded to withdraw the refusal.  Thus, the refusal to register the applied-for mark under Trademark Act Section 2(e)(1) is maintained and continues to be FINAL.  All Arguments and Evidence included with the April 12, 2017 and November 3, 2017 Actions are incorporated herein by reference.

 

SUMMARY OF ISSUES:

• NEW ISSUE: Trademark Act Sections 23(c) and 45 Refusal – Generic Mark
• FINAL REFUSAL MAINTAINED: Section 2(e)(1) Refusal – Merely Descriptive

 

SECTIONS 23(c) & 45 REFUSAL – GENERIC MARK

Registration is refused on the Supplemental Register because the applied-for mark is generic and thus incapable of distinguishing applicant’s goods.  Trademark Act Sections 23(c) and 45, 15 U.S.C. §§1091(c), 1127; see TMEP §§1209.01(c) et seq.

 

“A mark is generic if its primary significance to the relevant public is the class or category of goods or services on or in connection with which it is used.”  TMEP §1209.01(c)(i) (citing H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 989-90, 228 USPQ 528, 530 (Fed. Cir. 1986); In re ActiveVideo Networks, Inc., 111 USPQ2d 1581, 1600 (TTAB 2014)).  Determining whether a mark is generic requires a two-step inquiry:

 

(1)       What is the genus of goods at issue?

 

(2)       Does the relevant public understand the designation primarily to refer to that genus of goods?

 

In re Cordua Rests., Inc., 823 F.3d 594, 599, 118 USPQ2d 1632, 1634 (Fed. Cir. 2016) (citing H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d at 990, 228 USPQ at 530); TMEP §1209.01(c)(i). 

 

Regarding the first part of the inquiry, the genus of the goods may be defined by an applicant’s identification of goods.  See In re Cordua Rests., Inc., 823 F.3d at 602, 118 USPQ2d at 1636 (citing Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 640, 19 USPQ2d 1551, 1552 (Fed. Cir. 1991)); see also In re 1800Mattress.com IP, LLC, 586 F.3d 1359, 1361, 1363, 92 USPQ2d 1682, 1682, 1684 (Fed. Cir. 2009).   

 

In this case, the application, as amended, identifies the goods as “gems” and “jewelry”, which adequately defines the genus at issue.

 

Regarding the second part of the inquiry, the relevant public is the purchasing or consuming public for the identified goods.  Sheetz of Del., Inc. v. Doctor’s Assocs. Inc., 108 USPQ2d 1341, 1351 (TTAB 2013) (citing Magic Wand Inc. v. RDB Inc., 940 F.2d at 640, 19 USPQ2d at 1553).  In this case, the relevant public comprises ordinary consumers who purchase applicant’s goods, because there are no restrictions or limitations to the channels of trade or classes of consumers.  The attached evidence and evidence previously made of record, consisting of third party websites and articles using the term, shows that the wording “aquaprase” in the applied-for mark means a type of green-blue chalcedony and thus the relevant public would understand this designation to refer primarily to that genus of “gems” and “jewelry” because it is a type of gem and it is a category of jewelry, which is often grouped by gem when being offered for sale.  (See Attached and Previously Attached Evidence).  For example, the Nharo.com website offers various gems for purchase on its website, including “aquaprase”, which is described as a “green-blue gem from Zimbabwe, Africa”.  (See Attached).  The following list provides a sample of the evidence of record wherein “aquaprase” is used in a generic manner, without any reference to applicant or any significance other than as a type of gemstone. 

 

• Nharo.com defining aquaprase as a “green-blue gem from Zimbabwe, Africa”;
• Augustla.com describing a “Lola Brooks 18k yellow gold, marquis shaped, aquaprase ring” with a “16.36ct aquaprase”;
• Matahina South Sea Pearl, Zircon, & Aquaprase necklace, listing an “Aquaprase pebble” under the features of the jewelry;
• Puppy Love Jewelry aquaprase necklace: Product information describes aquaprase as “a new, not seen before gemstone” with a “new natural color of chalcedony from Africa!” but does not indicate any source or trademark significance to the term.  In part it states “In addition, aquaprase is said to allow one to see opportunities and conceive of new paths to take.  It carries strong connection to nature, and especially to devic[sic] consciousness of the oceans”.  This description repeatedly uses the term “aquaprase” as the name of the stone, not its source;
• Touchstone Gallery aquaprase pendant: identifies “a bluish green chalcedony, colored by chromium and neckel.  Translucent and opaque colors are features of this beautiful gemstone from Africa”;
• EBTH.com offers a sterling silver aquaprase ring.  Under “item details” the product is described as “a sterling silver aquaprase ring” that “features a light blue stone….” 
• Nellie Bly 2 – Aquaprase Post Earrings: “The stones in these earrings are gorgeous Aquaprase, a recent gem find from Africa!”;
• Semiprecious Wholesale offers numerous handmade “aquaprase earrings”;
• GemsZam on Etsy Studio offers “Natural Aquaprase cabochon gemstone”;
• Pamela Huizenga offers “Beaded Necklace with Aquaprase, Roman Glass, and Diamonds”, referring to the use of “unique one-of-a-kind stones”;
• Georgia Alexandra Aquaprase Diamond Earrings: “Precious cabochon aquaprase gemstones paired with emerald cut diamonds all wrapped in 18K white gold….”; Lists the gemstone weight as “Cabochon aquaprase, carat total weight 12.15” directly above the “Emerald cut diamond” carat total weight;
•  TheGirlWithKalEyes.com offers “Pear Shape Aquaprase & Peridot Earrings” with the wording “Main stone: Aquaprase” listed amongst other composition and merely informational data for the earrings such as “Metal: Sterling silver”, “Accent stone: Peridot”, and “Length: 1 ½”. 
•  Artistic Colored Stones offers “aquaprase” as one of several gems referring to the stone as “African chalcedony [that] has a beautiful medium bluish green color”;
• Iamthatsam.com offers an “Aquaprase Pendant”, describing the pendant as “Aquaprase, padparadscha sapphire, and brown diamond pendant in 22/18k gold and sterling silver”;
• Jewelry Maker offers “35cts Aquarprase Graduated Faceted Rondelles” strands of beads. 
• Armenta Old World Aquaprase Oval Cabochon Ring with Diamonds lists “Oval Aquaprase cabochon center, 23.5 x 16.5 mm” and provides its total carat weight.
• Evening Standard articles discusses the use of “African aquaprase” by a well-known jewelry designer, who listed her favorite “stones picked up on her travels”, namely, “lava bead, meteorite, and new discovery, Africa aquaprase”. 
• Life is a Gift Shop lists “Aquaprase” within its list of gemstones by which consumers may search for jewelry;
• UnderShub offers aquaprase earrings under the brand of XTREMEGEMS;
• Essentials Jewelry offers a number of “Aquaprase Rings”;
• Aquaprase jewelry also is widely available for purchase on Ebay® and Etsy®;
• COANativeMission, an Etsy seller, offers “African Aquaprase” jewelry, stating that “African Aquaprase is a fairly recent discovery and remains a fairly rare stone”.

 

Even articles that discuss the aquaprase gem in connection with the co-applicant often use the wording as a common name for the stone, indicating that the wording is generic for the stone and not for its source:

• “Aquaprase” – www.crystalandgemstones.com – This article describes aquaprase as a “vibrant bluish green chalcedony”, indicating that applicant chose the name aquaprase because of its origin in the also generic gemstone name “chrysoprase”.  (See Attachment to April 12, 2017 Office Action; see also Evidence and Arguments from November 3, 2017 Final Action regarding consumer understanding of “chrysoprase” influencing understanding of “aquaprase”).  The article goes on to repeatedly use and refer to “aquaprase” as a type of gemstone and in otherwise generic manners, including the following uses:
• “According to Yianni, there are two types of aquaprase.”
• “Many of the aquaprase specimens have a matrix attached to them, which initially was a turn off to most gem dealers.”
• “Melas states that when he gives his friends a choice between having the clean and gemmy aquaprase or the one with the matrix, they always chose the ‘matrix’”. 
• “Aquaprase’s attractive bluish green coloring differs from any other African chalcedony examined by the GIA thus far”.
• This new type of African chalcedony is easily recognized by its own composition and absorption spectrum….”
•  The Jeweler Blog – “Say Hello to ‘Aquaprase’, the Newly Discovered Bluish-Green Variety of Chalcedony” – In the title alone, this article labels “aquaprase” a “variety” of chalcedony.  The article goes on to refer to aquaprase as “the bluish-green chalcedony [that] gets its unique color from traces of chromium and nickel within the chemical makeup of the quartz stone.  Previously identified varieties of chalcedony occurred in yellowish-green and greenish-blue colors.”  Here again, the article refers to aquaprase as a variety of chalcedony. (See Attached to April 12, 2017 Office Action).
• GIA – “A New Natural-Color Bluish Green Chalcedony”: This article on the GIA® website refers to aquaprase as “a new type of chalcedony”.  While the GIA® article does indicate that “aquaprase” was meant to be a trade name, the article also describes, in great detail, the attributes of this type of chalcedony and why it is a new type and does not fall within other categories of chalcedony.  This explanation indicates that “aquaprase” is a variety, type, category, or genre of chalcedony gem.  (See Evidence Attached to April 12, 2017 Office Action).

 

The test is whether the relevant public would understand the mark to be generic for the category or genus of the goods at issue; not whether the relevant public would use the term to describe the genus.  In re Cordua Rests., Inc., 823 F.3d 594, 603, 118 USPQ2d 1632, 1637 (Fed. Cir. 2016) (quoting In re 1800Mattress.com IP, LLC, 586 F.3d 1359, 1364, 92 USPQ2d 1682, 1685 (Fed. Cir. 2009)); TMEP §1209.01(c)(i).  In such a determination, the “relevant public” represents the purchasing or consuming public for the identified goods.  Sheetz of Del., Inc. v. Doctor’s Assocs. Inc., 108 USPQ2d 1341, 1351 (TTAB 2013) (citing Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 640, 19 USPQ2d 1551, 1553 (Fed. Cir. 1991)); see In re Cordua Rests., Inc., 823 F.3d at 603-04, 118 USPQ2d at 1637-38.

 

Applicant argues that applicant has taken steps to control the use of the aquaprase gemstone and has registered the name aquaprase in other jurisdictions.  Applicant has provided a detailed explanation of the gemstone registration process, along with evidence that aquaprase does not appear in various lists of generic gemstone names.  Applicant appears to argue that these steps and evidence show that the term aquaprase identifies the source of the identified gems and jewelry and not the gem itself, because no other source of aquaprase exists.  (See Request for Reconsideration).  While the examining attorney appreciates applicant’s argument and the provided evidence in support thereof, the examining attorney maintains that the evidence of record shows that the applied-for mark will be perceived by the relevant public as a category of jewelry and a genus of gems, regardless of applicant’s efforts to prevent that perception. 

 

As noted above, the test to determine whether a mark is generic for a category of goods depends on what the relevant public would understand.  In the context of jewelry and gems, the relevant public includes not only sophisticated purchasers of jewelry but also the average purchaser of jewelry and gems.  The evidence of record shows that aquaprase jewelry, beads, and gems range widely in terms of cost, making the jewels accessible to everyone from amateur jewelry makers buying the beads on a whim to expert jewelers and designers, who may have extensive knowledge of the gem world.  As such, the examining attorney must consider how the relevant public, including those not familiar with gemstone naming conventions and source control, would perceive the wording “aquaprase” in the context of the identified goods and based on its used in the marketplace.

 

Evidence of the public’s understanding that a designation primarily refers to the genus of specific goods may be obtained from any competent source, such as magazines, catalogs, newspapers, and other publications.  See In re Cordua Rests., Inc., 823 F.3d 594, 599, 118 USPQ2d 1632, 1634 (Fed. Cir. 2016) (quoting Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960, 965, 114 USPQ2d 1827, 1830 (Fed. Cir. 2015)); TMEP §1209.01(c)(i).  In addition, material obtained from third-party Internet websites is generally accepted as competent evidence.  See In re Meridian Rack & Pinion, 114 USPQ2d 1462, 1465-66 (TTAB 2015); TBMP §1208.03; TMEP §710.01(b).  Further, research databases such as LEXIS/NEXIS® are also considered a source of competent evidence.  See In re Leatherman Tool Grp., Inc., 32 USPQ2d 1443, 1449 (TTAB 1994); In re Analog Devices Inc., 6 USPQ2d 1808, 1810 (TTAB 1988); TMEP §1209.01(c)(i). 

 

Based on the evidence listed in bullet form above, the relevant public is likely to perceive “aquaprase” as a genus or category of gems and jewelry.  The examining attorney also has attached additional third party evidence to this action consisting of websites offering aquaprase jewelry or gems for purchase and using the term “aquaprase” in a manner that indicates it is a particular type of gemstone available for loose purchase, and/or that is featured in the relevant piece of jewelry.  (See Attached, e.g., Hannah Blount Jewelry offers “a freeform aquaprase pendant is surrounded by asymmetrical gold prongs”, with a “29.75ct aquaprase”, Lesley Ann Jewels offer a “aquaprase stack band” described as a “sterling silver ring…set all around with aquaprase cabochons”).  The evidence of the common use of “aquaprase” in the marketplace shows that the public will understand that the term merely refers to a type of gem and a category of jewelry. 

 

Further, the examining attorney previously attached evidence of the use of the component terms “aqua” and “prase” to identify generic terms for chalcedony and jewelry containing the same”.  (See, e.g., Evidence Attached to November 3, 2017 Final Action, including, e.g., Minerals.Net “The Gemstone Chrysoprase”,  Gem Resources “Prase (Chalcedony)”, Overstock.com “Aqua Chalcedony”, Vita Beads.com “Aqua Chalcedony”).  This evidence shows that the public’s understanding of the terms in the applied-for mark includes knowledge that “aqua” and “prase” are common generic terms for a type of gemstone and jewelry containing the same.  As such, the public is likely to understand that “aquaprase” is the common name for another category of chalcedony.

 

The fact that the application identifies jewelry does not avoid a generic refusal for the term “aquaprase” in connection therewith.  The examining attorney has provided evidence of third parties using “aquaprase” as a category of jewelry.  For example, Semiprecious Wholesale, Essentials Jewelry, and Life is a Gift Shop each use “Aquaprase” as a sorting feature for jewelry they sell and/or as a category of jewelry.  (See Previously Attached Evidence).  The examining attorney also has provided evidence of use of gemstone names, in general, as a common manner for categorizing jewelry for purchase, including, for example, chrysoprase, diamonds, amethyst, and numerous other gemstones.  (See Attached and Previously Attached Evidence, e.g., Macy’s Option to Fitler Jewelry by “Stone”).  This evidence shows that consumers often encounter generic names for gemstones being used to categorize jewelry containing or featuring the same.  Further, the name of an ingredient, a key aspect, a central focus or feature, or a main characteristic of goods may be generic for those goods.  See In re Cordua Rests., Inc., 823 F.3d 594, 604, 118 USPQ2d 1632, 1637-38 (Fed. Cir. 2016) (affirming the Trademark Trial and Appeal Board’s holding of CHURRASCOS (a type of grilled meat) generic for restaurant services); In re Hotels.com LP, 573 F.3d 1300, 1304, 91 USPQ2d 1532, 1535 (Fed. Cir. 2009) (affirming the Trademark Trial and Appeal Board’s holding of HOTELS.COM generic for travel agency services, namely, making reservations and bookings for temporary lodging, and providing information about temporary lodging); In re Emergency Alert Sols. Grp., LLC, 122 USPQ2d 1088, 1091-93 (TTAB 2017) (holding LOCKDOWN ALARM generic for training services focusing on the use of and response to lockdown alarms); In re Meridian Rack & Pinion, 114 USPQ2d 1462, 1465-66 (TTAB 2015) (holding BUYAUTOPARTS.COM generic for on-line retail store services featuring auto parts); TMEP §1209.03(v); see also 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).  Thus, a term does not need to be the name of a specific product to be found generic.

 

Applicant provides evidence in its Request for Reconsideration that the term “aquaprase” is absent from various lists of generic terms for stones and gems.  However, the fact that a word or term is not found in the dictionary or similar publication is not controlling on the question of registrability when the word or term has a well understood and recognized meaning.  See in re Orleans Wines, Ltd., 196 USPQ 516, 517 (TTAB 1977); TMEP §1209.03(b); see In re Gould Paper Corp., 834 F.2d 1017, 1018, 5 USPQ2d 1110, 1111-12 (Fed. Cir. 1987); In re Planalytics, Inc., 70 USPQ2d 1453, 1456 (TTAB 2004); In re Tower Tech Inc., 64 USPQ2d 1314 (TTAB 2002).

 

Applicant also appears to argue that because the aquaprase stone may be referred to as a type of chalcedony that the term “aquaprase” cannot be generic for the identified goods.  This argument is not persuasive.  Any term that the relevant public understands to refer to a particular genus of goods is generic; thus there can be more than one generic term for a particular genus.  In re 1800Mattress.com IP, LLC, 586 F. 3d 1359, 1364, 92 USPQ2d 1682, 1685 (Fed. Cir. 2009); In re Meridian Rack & Pinion, 114 USPQ2d 1462, 1464 (TTAB 2015).

 

Therefore, the applied-for mark is generic for the identified goods.

 

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

 

Applicant should note the following additional ground for refusal that is maintained and continues to be FINAL, in the alternative.

 

 

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

Applicant amended to the Supplemental Register in the alternative.  As such, the refusal to register the applied-for mark because it merely describes a feature, ingredient, or characteristic of applicant’s goods is herein maintained and continues to be FINAL.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

 

All arguments and evidence in support of this refusal previously made of record are incorporated herein by reference.

 

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); 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).

 

Contrary to applicant’s arguments, the examining attorney has not impermissibly divided the applied-for mark in connection with this refusal.  The examining attorney has provided evidence that the terms “aqua” and “prase” are often used in other descriptive and generic terms for stones in the same formation.  Thus, “aqua” as a prefix, or initial term, and “prase” as a suffix, or used alone, are commonly used to identify types of gemstones and to categorize and describe jewelry containing the same.  (See Attached and Previously Attached Evidence, e.g., Overstock.com Aqua Chalcedony, Zales’ Aquamarine Birth Stones, Numerous third party websites for Chrysoprase and Aquaprase gems and jewelry to describe the goods).  Specifically, “aqua” describes the bluish green coloring of the gems and “prase” describes, or names, the gem as a greenish type of chalcedony.  Therefore, the wording merely describes the identified goods.

 

As previously argued, if the individual components of a mark retain their descriptive meaning in relation to the goods, generally 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., Apollo Med. Extrusion Techs., Inc. v. Med. Extrusion Techs., Inc., 123 USPQ2d 1844, 1851 (TTAB 2017) (holding MEDICAL EXTRUSION TECHNOLOGIES merely descriptive of medical extrusion goods produced by employing medical extrusion technologies); 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 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 do not create a unique, incongruous, or nondescriptive meaning in relation to the goods and/or services.  Specifically, “aqua” merely clarifies the particular shade of the “prase” or greenish chalcedony.  (See Previously Attached Dictionary and Website Evidence defining “aqua”, “prase”, and using the same). 

 

As discussed more fully above, applicant’s arguments regarding its actions with respect to the “aquaprase” name do not overcome this refusal.  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.  Here, the average consumer of aquaprase gems or aquaprase jewelry includes persons wishing to buy attractive jewelry and/or gems with which to make attractive jewelry.  The average consumer cannot be presumed to be an expert or sophisticated in this field, particularly considering that some of the goods containing aquaprase are fairly inexpensive, as are some of the beads available for purchase.  (See Attached, e.g., Jindal Gems Aquaprase Micro Cut Beads and Reiki de Light Gift Boutique Aquaprase Rings, featuring aquaprase stones and jewelry for under $50).  Thus, the average consumer may not be familiar with the various manners of protecting names within the gemstone industry.  In the context of the type of goods and the prevalent third party use of this term without any attribution to the applicant, the consumers are likely to immediately perceive the term “aquaprase” as merely descriptive of, if not generic for, the identified goods.

 

Therefore, the refusal of the applied-for mark under Trademark Act Section 2(e)(1) as merely descriptive is maintained and continues to be FINAL.

 

 

 

 

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 any questions or requires assistance in responding to this Office Action, please telephone the assigned examining attorney.

 

/gaynne g zimmerman/

Gaynne G. Zimmerman

Examining Attorney

Law Office 120

Telephone: 571-272-4027

gaynne.zimmerman@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.