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: 4/18/2019

 

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 OFFICE’S DATABASE OF MARKS

 

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

SUMMARY OF ISSUES:

 

·       Refusal-In-Part – Applied-For Mark Is A Varietal Name

·       Information Required Regarding Applied-For Mark

·       Section 2(e)(1) Refusal-In-Part – Merely Descriptive

·       Amended Identification Of Goods Required

·       Advisory: Multiple-Class Application Requirements

·       Disclaimer Required

 

REFUSAL-IN-PART – APPLIED-FOR MARK IS A VARIETAL NAME

 

This Partial Refusal Applies To Class 31 Only

 

Registration is refused in part because the applied-for mark is a varietal name for the identified goods in Class 31 and, thus, does not function as a trademark to indicate the source of applicant’s goods and to identify and distinguish them from others.  Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051-1052, 1127; see TMEP §1202.12.  The attached evidence that shows that “PEPPER X" is the varietal name for the Capsicum chili pepper.  See https://en.wikipedia.org/wiki/Pepper_X; https://www.chilipeppermadness.com/news/pepper-x-latest-news-and-information/; and https://www.today.com/food/pepper-x-t116798.

 

Varietal or cultivar names are designations used to identify cultivated varieties or subspecies of live plants or agricultural seeds.  TMEP §1202.12.  They are generic and cannot be registered as trademarks because they are the common descriptive names of plants or seeds by which such varieties are known to the U.S. consumer.  Id.  Moreover, a consumer “has to have some common descriptive name he can use to indicate that he wants one [particular] variety of apple tree, rose, or whatever, as opposed to another, and it is the varietal name of the strain which naturally and commonly serves this purpose.”  In re Pennington Seed, Inc., 466 F.3d 1053, 1057, 80 USPQ2d 1758, 1761 (Fed. Cir. 2006) (quoting In re Hilltop Orchards & Nurseries, Inc., 206 USPQ 1034, 1036 (TTAB 1979)); see In re Delta & Pine Land Co., 26 USPQ2d 1157, 1159 n.4 (TTAB 1993).

 

INFORMATION REQUIRED REGARDING APPLIED-FOR MARK

 

To permit proper examination of the applied-for mark, applicant must indicate the following:

 

(1)       Whether PEPPER X has ever been used or will be used as a varietal or cultivar name; and

 

(2)       Whether PEPPER X has ever been used or will be used in connection with a plant patent, utility patent, or certificate for plant-variety protection. 

 

TMEP §1202.12; see 37 C.F.R. §2.61(b).

 

Failure to comply with a request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814. 

 

Applicant should note the following additional ground for refusal.

 

SECTION 2(e)(1) REFUSAL-IN-PART – MERELY DESCRIPTIVE

 

This Partial Refusal Applies To Classes 29 and 30 Only

 

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

 

The applicant’s mark is PEPPER X for, in relevant part, “processed edible seeds; processed peppers” in Class 29, and “pepper seeds; dried chili peppers; pepper” in Class 30.

 

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods.  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, 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).

 

A mark does not need to be merely descriptive of all the goods or services specified in an application.  In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); In re Franklin Cnty. Historical Soc'y, 104 USPQ2d 1085, 1089 (TTAB 2012).  “A descriptiveness refusal is proper ‘if the mark is descriptive of any of the [goods or] services for which registration is sought.’”  In re The Chamber of Commerce of the U.S., 675 F.3d at 1300, 102 USPQ2d at 1219 (quoting In re Stereotaxis Inc., 429 F.3d 1039, 1040, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005)).

 

Moreover, the fact that an applicant may be the first or only user of a merely descriptive designation does not necessarily render a word or term incongruous or distinctive; as in this case, the evidence shows that PEPPER X is merely descriptive.  See In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1514 (TTAB 2016); In re Phoseon Tech., Inc., 103 USPQ2d 1822, 1826 (TTAB 2012); TMEP §1209.03(c).

 

Here, the term “PEPPER X” merely describes a feature of applicant’s goods, namely, applicant’s processed edible seeds, processed peppers, pepper seeds, dried chili peppers, and pepper.  Specifically, “PEPPER X” is a cultivar of the Capsicum chili pepper.  See Refusal-In-Part – Applied-For Mark Is A Varietal Name, supra.  Thus, the mark immediately conveys a feature of applicant’s goods. 

The following attached evidence demonstrates that “PEPPER X” is commonly used to refer to a type of chili pepper.  See e.g., https://www.thrillist.com/news/nation/hottest-pepper-world-pepper-x (describing “PEPPER X” as “unofficially the world’s hottest pepper”); see also https://www.cayennediane.com/peppers/pepper-x-worlds-hottest-pepper/ (“Pepper X . . . has been widely reported as the hottest pepper in the world, but still needs to be tested and confirmed to actually earn that title”); https://www.foxnews.com/food-drink/pepper-x-said-to-be-worlds-hottest-chili-burns-with-twice-the-heat-of-carolina-reaper (“‘Pepper X is three times hotter than any other peppers that are out there available commercially’”); https://www.pepperscale.com/pepper-x/ (“Pepper X dwarfs other super-hot peppers on the Scoville scale, and it’s only a Guinness Book of World Records acknowledgement away from being the official hottest pepper in the world.”); https://www.foodandwine.com/news/pepper-x-hottest (“Pepper X Claims to be the New ‘World’s Hottest Chili’”); https://www.bravotv.com/blogs/pepper-x-is-now-the-hottest-pepper-in-the-world (“Pepper X, the presumed soon-to-be Guinness World Record holder for the hottest pepper in the world”); https://www.foodbeast.com/news/pepper-x-worlds-new-hottest-pepper/ (“‘Pepper X’ At Over 3 million Scoville Is The New World’s Hottest Pepper”); https://www.thedailymeal.com/pepper-x-worlds-hottest-pepper-hot-sauce/92317 (“Pepper X Is the New Hottest Pepper in the World”).

The attached evidence consisting of 8 websites showing third-party usage of the term “PEPPER X” to describe a variety of pepper demonstrates that purchasers will immediately understand the applied-for-mark as conveying a salient feature of applicant’s goods. Accordingly, the mark is merely descriptive of a feature of the applied-for goods.

 

Ultimately, when purchasers encounter applicant’s goods using the mark “PEPPER X”, they will immediately understand the mark as an indication of the feature of applicant’s goods rather than as an indication that applicant is the source of the goods.  Therefore, the application is refused under Section 2(e)(1) of the Trademark Act.

 

Response to Section 2(e)(1) – Merely Descriptive Refusal

 

In addition to being merely descriptive, the applied-for mark appears to be generic in connection with the identified services and, therefore, incapable of functioning as a source-identifier for applicant’s services.  In re The Am. Acad. of Facial Plastic & Reconstructive Surgery, 64 USPQ2d 1748 (TTAB 2002); In re A La Vieille Russie, Inc., 60 USPQ2d 1895 (TTAB 2001); see TMEP §§1209.01(c) et seq., 1209.02(a).  Under these circumstances, neither an amendment to proceed under Trademark Act Section 2(f) nor an amendment to the Supplemental Register can be recommended.  See TMEP §1209.01(c).

 

If applicant responds to the refusals, applicant must also respond to the requirements set forth below.

 

AMENDED IDENTIFICATION OF GOODS REQUIRED

 

Class 25

 

The word “clothing” in the identification of goods is indefinite and too broad and must be clarified because the word does not make clear the nature of the goods and could identify goods in more than one international class.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  The following are examples of acceptable identifications:  “clothing for protection against accidents, irradiation and fire” in International Class 9; “surgical gowns” in International Class 10; “pet clothing” in International Class 18; and “shirts,” “shorts,” and “pants” in International Class 25.  Therefore, applicant must amend the identification to specify the type of clothing.

 

If applicant’s “clothing” is in International Class 25, applicant may amend the identification to insert the word “namely,” after “clothing” and then list the specific types of clothing items in that class (e.g., shirts, pants, coats, dresses). 

 

Class 29

 

The wording “processed edible seeds; pepper mash; pepper oil” in the identification of goods is indefinite and must be clarified because it does not sufficiently indicate the type of goods offered.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Class 30

 

The identification of goods in Class 30 is acceptable as written.

 

Class 31

 

The identification of goods in Class 31 is acceptable as written.

 

Applicant may adopt the following identification of goods, with changes highlighted in bold, if accurate:

 

Class 9 – “Clothing for protection against accidents, irradiation and fire”; and

 

Class 10 – “Surgical gowns”; and

 

Class 18 – “Pet clothing”; and

 

Class 25 – “Clothing, namely, {indicate type, e.g., shorts, pants}; hats; t-shirts”; and

 

Class 29 – “Pepper preserves; pepper mash being pepper puree; processed edible seeds, not being seasonings or flavorings; processed peppers; hot chili pepper puree; pepper oil for food; pepper paste; pickled peppers”; and

 

Class 30 – “Condiments, namely, mustards, salsas and sauces; pepper sauce; sauces; seasonings; spices; pepper chaff, crushed pepper, and pepper seeds, all for use as spices and seasonings; salsa; hot sauce; mustard; dried chili peppers; fermented hot pepper paste; hot chili pepper sauce; pepper; pepper paste for use as a seasoning; pepper powder”; and

 

Class 31 – “Fresh peppers; live plants; plant seeds; unprocessed edible seeds; unprocessed peppers; pepper seeds for planting; raw peppers”

 

Applicant may amend the identification to clarify or limit the goods, but not to broaden or expand the goods beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods may not later be reinserted.  See 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.

 

Applicant should note the following additional requirement.

 

ADVISORY: MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

The application identifies goods 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 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 fees already paid (view the USPTO’s current fee schedule).  The application identifies goods that are classified in at least 7 classes; however, applicant submitted fees sufficient for only 4 classes.  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 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

See 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.

 

Filing Fees For Added Classes

 

The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class.  See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a).  See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.

 

Applicant should note the following additional requirement.

 

DISCLAIMER REQUIRED

 

Applicant must provide a disclaimer of the unregistrable part of the applied-for mark even though the mark as a whole appears to be registrable.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).  A disclaimer of an unregistrable part of a mark will not affect the mark’s appearance.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).

 

In this case, applicant must disclaim the wording “PEPPER” because it is not inherently distinctive.  This unregistrable term is merely descriptive of a feature of applicant’s goods.  See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a). 

 

The term “pepper” appears in the identification of goods.  Thus, the wording merely indicates that a feature of applicant’s goods are peppers.

 

Applicant may respond to this issue by submitting a disclaimer in the following format: 

 

No claim is made to the exclusive right to use “PEPPER” apart from the mark as shown. 

 

For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage. 

 

RESPONSE GUIDELINES

 

For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

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.  

 

ASSISTANCE

 

Please call or email the assigned trademark examining attorney with questions about this Office action.

 

/Evonne M. Neptune/

Trademark Examining Attorney, Law Office 127

United States Patent and Trademark Office

(571) 270-1740

 

 

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.