United States Patent and Trademark Office (USPTO)

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

 

 

 

REQUEST FOR RECONSIDERATION

AFTER FINAL ACTION

DENIED

 

 

Issue date:  November 25, 2020

 

Applicant’s request for reconsideration is denied.  See 37 C.F.R. §2.63(b)(3).  The trademark examining attorney has carefully reviewed applicant’s request and determined the request did not:  (1) raise a new issue, (2) resolve the outstanding issue, (3) provide any new or compelling evidence with regard to the outstanding issue, or (4) present analysis and arguments that were persuasive or shed new light on the outstanding issue.  TMEP §§715.03(a)(ii)(B), 715.04(a). 

 

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

 

Applicant has applied to register MULTEEZ (Standard Characters) for “Homeopathic pharmaceuticals, namely, vitamins.”

 

“Multeez” is the phonetic equivalent of “multis.”  When used on or in conjunction with vitamins and other supplements, “multi(s)” refers to “multivitamin(s).”  From https://www.healthline.com/nutrition/do-multivitamins-work (copy attached to the December 10, 2019 Office action):

 

What are multivitamins?

 

Multivitamins are supplements that contain many different vitamins and minerals, sometimes alongside other ingredients (3).

 

As there’s no standard for what constitutes a multivitamin, their nutrient composition varies by brand and product.

 

Multivitamins are also called multiminerals, multis, multiples, or simply vitamins.

 

They’re available in many forms, including tablets, capsules, chewable gummies, powders, and liquids.

 

[emphasis added].

 

The website excerpts attached to the December 10, 2019 Office action and the May 8, 2020 final Office action show that the words “multi(s)” and “multivitamin(s)” are used synonymously in the vitamins and supplements field.

 

For the reasons explained in the May 8, 2020 final Office action, it presumed that applicant’s “Homeopathic pharmaceuticals, namely, vitamins” will include “multivitamins.”

 

The fact that applicant’s mark is spelled “multeez” rather than “multis” is insufficient to overcome the descriptiveness refusal.  A novel spelling or an intentional misspelling that is the phonetic equivalent of a merely descriptive word or term is also merely descriptive if purchasers would perceive the different spelling as the equivalent of the descriptive word or term.  See In re Quik-Print Copy Shop, Inc., 616 F.2d 523, 526 & n.9, 205 USPQ 505, 507 & n.9 (C.C.P.A. 1980) (holding “QUIK-PRINT,” phonetic spelling of “quick-print,” merely descriptive of printing and photocopying services); In re Calphalon Corp., 122 USPQ2d 1153, 1163 (TTAB 2017) (holding “SHARPIN”, phonetic spelling of “sharpen,” merely descriptive of cutlery knife blocks with built-in sharpeners); In re Carlson, 91 USPQ2d 1198, 1203 (TTAB 2009) (holding “URBANHOUZING,” phonetic spelling of “urban” and “housing,” merely descriptive of real estate services); TMEP §1209.03(j).

 

Double Entendre

 

“Applicant maintains its argument that its mark is a playful double-entendre where one of the meanings is not descriptive.  The combination of the root of the term ‘MULTI’ (i.e., ‘MULT’) with the suffix ‘-EEZ’ creates a double entendre, where the prefix ‘MULT’ in Applicant’s MULTEEZ mark is a reference to ‘MULTI-VITAMINS’” and the suffix “-EEZ” is a “playful spelling” of “EASE.”  Thus, according to applicant, its mark “has the ability of conveying the meaning ‘MULTI EASE’ or suggesting that the vitamins being offered under the mark are easy or painless for children to ingest and/or enjoy.”

 

A “double entendre” is an expression that has a double connotation or significance as applied to the goods and/or services.  TMEP §1213.05(c); see In re Colonial Stores Inc., 394 F.2d 549, 552-53, 157 USPQ 382, 384-85 (C.C.P.A. 1968) (finding SUGAR & SPICE a double entendre and not descriptive for bakery products because it evokes the nursery rhyme “sugar and spice and everything nice”).

 

A mark that comprises a “double entendre” will not be refused registration as merely descriptive if one of its meanings is not merely descriptive in relation to the goods.  TMEP §1213.05(c).  However, the multiple meanings that make an expression a “double entendre” must be well-recognized by the public and readily apparent from the mark itself in the context of the applied-for goods.  See Robinson v. Hot Grabba Leaf, LLC, 2019 USPQ2d 149089, at *8 (TTAB 2019); In re Calphalon Corp., 122 USPQ2d 1153, 1163-64 (TTAB 2017) (quoting TMEP §1213.05(c)).  If the alleged second meaning of the mark is only apparent to purchasers “after they view the mark in the context of the applicant's trade dress, advertising materials or other matter separate from the mark itself,” the mark is not a double entendre.  In re Yarnell Ice Cream, LLC, 2019 USPQ2d 265039, at *7 (TTAB 2019) (quoting In re The Place, Inc., 76 USPQ2d 1467, 1470 (TTAB 2005)). 

 

In this case, applicant has provided no evidence that “MULTEEZ” as a whole is a double entendre that is “well-recognized by the public and readily apparent from the mark itself” in the context of vitamins.  None of the third-party registrations submitted by applicant is for a mark that consists in whole or in part of the prefix “MULT” and the suffix “EEZ.”

 

Applicant’s “Portfolio” of “-EEZ” Marks

 

As explained by the Trademark Trial and Appeal Board (TTAB) in In re BFY, LLC (TTAB September 29, 2020) (U.S. Application Serial No. 88090409), which involved applicant’s co-pending application for ALLERGEEZ for “Homeopathic pharmaceuticals for use in the treatment of allergy symptoms; Medicated candies for the treatment of allergy symptoms”[1][2]:

 

Applicant’s “portfolio” argument is roughly akin to a “family of marks” claim, in which a group of marks has a common characteristic that is recognized by the purchasing public. See J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889, 1891 (Fed. Cir. 1991). An applicant’s mere intention and ownership of multiple marks containing the common characteristic do not suffice to establish its recognition by the purchasing public. Am. Standard Inc. v. Scott & Fetzer Co., 200 USPQ 457, 461 (TTAB 1978) (“It is settled that merely adopting, using and registering a group of marks having a feature in common for similar or related goods with possibly the intent to establish a ‘family of marks’ identified by the common portion does not afford relief under this theory.”).

 

Id., at p. 10.

 

The fact that applicant may have a portfolio of marks that contain the “-EEZ” suffix is immaterial as to whether the applied-for mark in this case is primarily merely descriptive, even though applicant submitted evidence with the request for reconsideration that the TTAB found lacking in In re BFY, LLC, i.e., “evidence of the extent to which its “–EEZ” formative marks have been used or promoted in commerce.”  In re BFY, supra, at p. 11. 

 

It is well settled that each case must be decided on its own facts.  See In re Nett Designs, Inc., 236 F.3d 1339, 1342, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001); In re Datapipe, Inc., 111 USPQ2d 1330, 1336 (TTAB 2014); TMEP §1209.03(a).  The question of whether a mark is merely descriptive is determined based on the evidence of record at the time each registration is sought.  In re Virtual Indep. Paralegals, LLC, 2019 USPQ2d 111512, at *9 (TTAB 2019) (citing In re Nett Designs, Inc., 236 F.3d at 1342, 57 USPQ2d at 1566); TMEP §1209.03(a).  The evidence of record clearly shows that the word “multis,” when used on or in conjunction with vitamins/supplements, merely describes “multivitamins.”  Thus, the applied-for mark, MULTEEZ, which is the phonetic equivalent of “multis,” also merely describes multivitamins.  Applicant’s “portfolio of marks” argument and evidence fail to obviate the descriptive nature of the applied-for mark.

 

Accordingly, the following refusal made final in the Office action dated May 8, 2020 is maintained and continued: 

 

            • Section 2(e)(1) descriptiveness refusal

 

See TMEP §§715.03(a)(ii)(B), 715.04(a). 

 

Appeal Information

 

The Trademark Trial and Appeal Board will be notified to resume the appeal.  See TMEP §715.04(a).

 

 

 

/Barbara A. Gaynor/

Barbara A. Gaynor

Trademark Examining Attorney

Law Office 115

571-272-9164

Barbara.Gaynor@uspto.gov