PTO- 1960
`
`Approved for use through 01/31/2027. OMB 0651-0050
`
`U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
`Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number
`
`Request for Reconsideration after Final Action
`
`The table below presents the data as entered.
`
`Input Field
`
`Entered
`
`SERIAL NUMBER
`
`MARK SECTION
`
`MARK
`
`LITERAL ELEMENT
`
`STANDARD CHARACTERS
`
`USPTO-GENERATED IMAGE
`
`MARK STATEMENT
`
`ARGUMENT(S)
`
`90904395
`
`mark
`
`ORYZA HEALTH SCIENCES
`
`YES
`
`YES
`
`The mark consists of standard characters, without claim to any particular font style,
`size or color.
`
`Please see the attached Argument within the Evidence Section.
`
`EVIDENCE SECTION
`
`        EVIDENCE FILE NAME(S)
`
`       ORIGINAL PDF FILE
`
`       CONVERTED PDF FILE(S)
`       (7 pages)
`
`evi_19917556228-202402090 85427488857_._4942-103ARG.pdf
`
`\\TICRS\EXPORT18\IMAGEOUT 18\909\043\90904395\xml10 \RFR0002.JPG
`
`\\TICRS\EXPORT18\IMAGEOUT 18\909\043\90904395\xml10 \RFR0003.JPG
`
`\\TICRS\EXPORT18\IMAGEOUT 18\909\043\90904395\xml10 \RFR0004.JPG
`
`\\TICRS\EXPORT18\IMAGEOUT 18\909\043\90904395\xml10 \RFR0005.JPG
`
`\\TICRS\EXPORT18\IMAGEOUT 18\909\043\90904395\xml10 \RFR0006.JPG
`
`\\TICRS\EXPORT18\IMAGEOUT 18\909\043\90904395\xml10 \RFR0007.JPG
`
`\\TICRS\EXPORT18\IMAGEOUT 18\909\043\90904395\xml10 \RFR0008.JPG
`
`DESCRIPTION OF EVIDENCE FILE
`
`Argument
`
`CORRESPONDENCE INFORMATION
`
`NAME
`
`E. Anthony Figg
`
`PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE
`
`PTO-TM-Email@rfem.com
`
`SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) NOT PROVIDED
`
`DOCKET/REFERENCE NUMBER
`
`SIGNATURE SECTION
`
`RESPONSE SIGNATURE
`
`SIGNATORY'S NAME
`
`SIGNATORY'S POSITION
`
`4942-103
`
`/Leo M. Loughlin/
`
`Leo M. Loughlin
`
`Attorney of record, DC bar member
`
`       
`       
`       
`       
`       
`       
`

`

`SIGNATORY'S PHONE NUMBER
`
`DATE SIGNED
`
`2027836040
`
`02/09/2024
`
`ROLE OF AUTHORIZED SIGNATORY
`
`Authorized U.S.-Licensed Attorney
`
`SIGNATURE METHOD
`
`Sent to third party for signature
`
`CONCURRENT APPEAL NOTICE FILED
`
`YES
`
`FILING INFORMATION SECTION
`
`SUBMIT DATE
`
`TEAS STAMP
`
`Fri Feb 09 10:07:03 ET 2024
`
`USPTO/RFR-XXX.XXX.XX.XXX-
`20240209100703674344-9090
`4395-85035a494a396e910e83
`a5ae765b0a1df7646cea32d2b
`7c54179e326550e307ea8-N/A
`-N/A-20240209085427488857
`
`PTO- 1960
`
`Approved for use through 01/31/2027. OMB 0651-0050
`
`U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
`Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number
`
`Request for Reconsideration after Final Action
`To the Commissioner for Trademarks:
`
`Application serial no. 90904395 ORYZA HEALTH SCIENCES(Standard Characters, see https://tmng-
`al.uspto.gov/resting2/api/img/90904395/large) has been amended as follows:
`
`ARGUMENT(S)
`In response to the substantive refusal(s), please note the following:
`
`Please see the attached Argument within the Evidence Section.
`
`EVIDENCE
`Evidence has been attached: Argument
`Original PDF file:
`evi_19917556228-202402090 85427488857_._4942-103ARG.pdf
`Converted PDF file(s) ( 7 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5Evidence-6Evidence-7
`
`Correspondence Information
`      E. Anthony Figg
`      PRIMARY EMAIL FOR CORRESPONDENCE: PTO-TM-Email@rfem.com
`      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED
`
`The docket/reference number is 4942-103.
`
`Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the
`owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic
`Application System (TEAS).
`
`SIGNATURE(S)
`Request for Reconsideration Signature
`Signature: /Leo M. Loughlin/     Date: 02/09/2024
`Signatory's Name: Leo M. Loughlin
`Signatory's Position: Attorney of record, DC bar member
`
`

`

`Signatory's Phone Number: 2027836040 Signature method: Sent to third party for signature
`
`The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a
`U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); and he/she is currently the owner's/holder's attorney or
`an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S.-licensed attorney not currently associated
`with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a
`signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder
`has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of
`attorney appointing him/her as an associate attorney in this matter.
`
`The applicant is filing a Notice of Appeal in conjunction with this Request for Reconsideration.
`
`Mailing Address:    E. Anthony Figg
`   ROTHWELL, FIGG, ERNST & MANBECK, PC
`   Suite 900 East
`   901 New York Avenue, N.W.
`   Washington, District of Columbia 20001
`Mailing Address:    E. Anthony Figg
`   ROTHWELL, FIGG, ERNST & MANBECK, PC
`   Suite 900 East
`   901 New York Avenue, N.W.
`   Washington, District of Columbia 20001
`
`Serial Number: 90904395
`Internet Transmission Date: Fri Feb 09 10:07:03 ET 2024
`TEAS Stamp: USPTO/RFR-XXX.XXX.XX.XXX-202402091007036
`74344-90904395-85035a494a396e910e83a5ae7
`65b0a1df7646cea32d2b7c54179e326550e307ea
`8-N/A-N/A-20240209085427488857
`
`        
` 
`

`

`ARGUMENT
`
`Applicant submits this Responseto the Office Action mailed August 10, 2023 that
`
`refused registration of Applicant’s mark ORYZA HEALTH SCIENCES onthe basis of
`
`deceptiveness and deceptively misdescriptiveness. Applicant requests withdrawalof the refusal
`
`for the foregoing reasons.
`
`A. Applicant’s Mark is Not Deceptive under 2(a)
`
`The standard for determining whether a mark is deceptive under Section 2(a) was
`
`articulated by the U.S. Court of Appeals for the Federal Circuit in /n re Budge Manufacturing
`
`Co., Inc., 857 F.2d 773, 8 USPQ2d 1259, 1260 (Fed. Cir. 1988). The three-prong standardis as
`
`follows: 1) Is the term misdescriptive of the character, quality, function, composition or use of
`
`the services? 2) If so, are prospective purchaserslikely to believe that the misdescription actually
`
`describes the services? 3) If so, is the misdescription likely to affect the decision to purchase? A
`
`mark must meetall three prongs ofthis standard to be adjudged deceptive. The burdenis initially
`
`on the U.S. Patent and Trademark Office (USPTO) to put forth sufficient evidence to show that
`
`the mark for which registration is sought meets the abovecriteria of unregistrability. Jd., 857
`
`F.2d at 775. Applicant respectfully submits that the Office Action has not satisfied its burden and
`
`the evidence of record doesnotsatisfy each prong of the requisite standard.
`
`The record doesnot include sufficient evidence to establish a prima facie case that
`
`ORYZA HEALTH SCIENCESis deceptive with regard to Applicant’s dietary supplements. “As
`
`a starting point for analysis ... for a term to misdescribe services, the term must be merely
`
`descriptive of a significant aspect of the services which the services could plausibly possess but
`
`in fact do not.” Jn re Phillips-Van Heusen Corp., 63 USPQ2d 1047, 1051 (TTAB 2002). The
`
`Office Action offers no proofthat the first prong of the Budgetest is satisfied, but merely
`
`

`

`concludesthat it does. However, this conclusion falls short of the requisite starting inquiry. The
`
`starting inquiry must be whether the term immediately conveys information concerning a
`
`significant feature or characteristic of the goods in connection with whichit is used or intended
`
`to be used. See In re Phillips-Van Heusen Corp., 63 USPQ2d 1047, 1051 (TTAB 2002); in re
`
`Engineering Systems Corp., 2 USPQ2d 1075 (TTAB 1986); and In re Bright-Crest, Ltd., 204
`
`USPQ 591 (TTAB 1979).
`
`Moreover, whether a term is merely descriptive is determined not in the abstract but in
`
`relation to the goods for whichregistration is sought, the context in which it is being used on or
`
`in connection with those goods andthe possible significance, if any, that the term would have to
`
`the average purchaserof the goods because of the mannerofits use. See In re Bright-Crest, Ltd.,
`
`204 USPQ 591, 593 (TTAB 1979).
`
`1. Oryza Is Not Misdescriptive ofthe goods.
`
`The evidence of record fails to establish a prima facie case that the term “oryza,” as used
`
`in the ORYZA HEALTH SCIENCES mark, immediately conveys information concerning a
`
`significant characteristic or feature of Applicant’s dietary supplements. A significant feature or
`
`characteristic is one of a noticeably or measurably large amount. The available evidencefails to
`
`show that “oryza,”is a significant characteristic or feature of dietary supplements in the United
`
`States. The evidence of record therefore does not create a primafacie case that “oryza,” dietary
`
`supplementsis a significant or measurably large feature or characteristic of dietary supplements
`
`in the United States. This evidenceis also insufficient to show that “oryza,” has significance to
`
`the average purchaser of dietary supplements in the United States.
`
`At most, the factual discrepancies in the evidence of record creates doubt regarding
`
`whether “oryza” is a significant feature or characteristic of dietary supplements.
`
`It is well
`
`

`

`established that any doubt about the merely descriptive character and, thus, the misdescriptive
`
`character of a mark must be resolved in Applicant’s favor and in favor of publishing the ORYZA
`
`HEALTH SCIENCESmark. See e.g., In re Atavio, 25 USPQ2d 1361 (TTAB 1992). For these
`
`reasons, the first prong of the Budgetest is not satisfied and Applicant’s ORYZA HEALTH
`
`SCIENCESmark should be published.
`
`In addition,to satisfy the first prong of the Budgetest, a term must be shown to
`
`immediately describe an ingredient, quality, characteristic or feature thereofor if it directly
`
`conveys information regarding the nature, function, purpose or use of the goods. See Jn re Abcor
`
`Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978). The term “oryza” in
`
`Applicant’s mark cannot properly be deemed merely descriptive and is at most suggestive of
`
`Applicant’s dietary supplements. Simply put, “oryza” does not, on its own, describe or directly
`
`convey information regarding what type of goods Applicant offers. Whether a mark is merely
`
`descriptive is a question of fact, determined from the viewpoint of the relevant purchasing
`
`public. Evidence of the purchasing public's understanding of a term may be obtained from any
`
`competent source, such as dictionaries, newspapers, or surveys. In re Bed & Breakfast Registry,
`
`791 F.2d 157, 160 (Fed. Cir. 1986). As detailed herein above,there is little evidence that “oryza”
`
`is present in dietary supplements.
`
`For the foregoing reasons,the first prong of the Budge test for determining whether a
`
`markis deceptive under Section 2(a) is not satisfied. Significantly, there is no evidence from the
`
`Office Action which showsthat “oryza” misdescribes Applicant’s goods because the term is not
`
`merely descriptive of a significant aspect of Applicant’s goods. At most, there is doubt regarding
`
`the first prong of the Budge test. All doubt must be resolved in the Applicant’s favor and in favor
`
`of publishing the Applicant’s mark. The refusal of registration pursuant to Section 2(a) of the
`
`

`

`Lanham Act should be reversed and Applicant’s ORYZA HEALTH SCIENCESmark should be
`
`published.
`
`2. Consumers Are Not Likely to Believe that “Oryza” Describes Applicant's Goods
`
`The second prong of the Budge test requires a showing that purchasersare likely to
`
`believe that the term “oryza” describes Applicant’s goods. The Office Action makes conclusory
`
`statements that the second prong of the Budgetest is satisfied and asserts that consumers would
`
`likely believe the purported misdecription in the mark because “it is common in applicant’s
`
`industry for such goodsto include plants from the grass family, and consumers have come to
`
`expect such an ingredient or component.” However, the Office Action offers no support for this
`
`conclusion whichit had the burdento do. As such, the second prong of the Budge test for
`
`determining whether a mark is deceptive under Section 2(a) is not satisfied.
`
`3. Misdescription Is Not Likely to Affect Consumer Decisions to Purchase
`
`Satisfying the third prong of the Budge test and establishing a prima facie case of
`
`deceptiveness mandates that the Office Action provide sufficient evidence to show that the
`
`misdescriptive quality or characteristic would be a material factor in the purchasing decision of a
`
`significant portion of the relevant consumers. To do so, the Office Action must provide evidence
`
`that the misdescriptive quality or characteristic would make the service more appealing or
`
`desirable to a significant portion of prospective purchasers. See In re White Jasmine LLC, 106
`
`USPQ2d at 1392 (citing In re Juleigh Jeans Sportswear Inc., 24 USPQ2d 1694, 1698-99 (TTAB
`
`1992)); and In re Spirits Int’l, N.V., 563 F.3d 1347, 1353, 90 USPQ2d 1489, 1493 (Fed.Cir.
`
`2009).
`
`The Office Action asserts that the third prong of the Budgetest is satisfied because the
`
`term “oryza,” makes Applicant’s goods more appealing or desirable to prospective purchasers
`
`

`

`because “it is used for reduction of cardiovascular risks, antioxidant properties, control of
`
`diabetes, reduction of cholesterol, treatment of skin inflammation, and strengthening the immune
`
`system, among other things.” The Office Action has specifically relied upon evidence obtained
`
`from websites touting the benefits of eating rice in an effort to support this contention. Applicant
`
`respectfully disagrees with the Office Action and asserts that the referenced evidenceis
`
`insufficient to establish a prima facie case of deceptiveness. The evidence does not show that the
`
`term “oryza” would affect the purchasing decision of a significant portion of the relevant
`
`consumers. Jn re Spirits Int'l, N.V., 563 F.3d at 1353. The evidence of record is inconsistent and
`
`establishes that only a specious connection exists, if any, between “oryza” and health benefits in
`
`the context of dietary supplements. Thus, the evidence ofrecordis insufficient to establish a
`
`prima facie case of deceptiveness. The evidence does not showthat the term “oryza”as used in
`
`Applicant’s mark would affect the purchasing decision of a significant portion of the relevant
`
`consumers. For the foregoing reasons, the third prong of the Budge test for determining whether
`
`a mark is deceptive under Section 2(a) is not satisfied. The refusal of registration pursuant to
`
`Section 2(a) of the Lanham Act should be reversed and the Applicant’s mark should be
`
`published.
`
`B. Applicant’s Markis not Deceptively Misdescriptive
`
`For similar reasons as above, Applicant’s mark ORYZA HEALTH SCIENCES is not
`
`deceptively misdescriptive since it does not misdescribe Applicant’s, and even if it were, there is
`
`no evidence in the record that consumers would believe the misrepresentation.
`
`The test for deceptive misdescriptiveness under Section 2(e)(1) has two parts. First, it
`
`must be shownthat the mark misdescribes the goods. In order for a term to misdescribe goods or
`
`services, “the term must be merely descriptive, rather than suggestive, of a significant aspect of
`
`

`

`the goods or services which the goodsplausibly possess but in fact do not.” Jn re Phillips-Van
`
`Heusen Corp., 63 USPQ2d 1047, 1051 (TTAB 2002); see also In re Shniberg, 79 USPQ2d 1309,
`
`1312 (TTAB 2006). The examining attorney bears the burden of showingthat a term is merely
`
`descriptive (and thus is potentially deceptively misdescriptive) of the relevant. See [n re Merrill
`
`Lynch, Pierce, Fenner, and Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987).
`
`Second, if the term misdescribes the goods, it must be proven that consumersare likely to
`
`believe the misrepresentation. /n re White Jasmine LLC, 106 USPQ2d 1385, 1394 (TTAB 2013);
`
`In re Phillips-Van Heusen Corp., 63 USPQ2d at 1048; Jn re Quady Winery Inc., 221 USPQ
`
`1213, 1214 (TTAB 1984). The Board applies the reasonably prudent consumertest in assessing
`
`whether a mark determined to be misdescriptive also would deceive consumers. See R. J.
`
`Reynolds Tobacco Co. v. Brown & Williamson Tobacco Corp., 226 USPQ 169, 179 (TTAB
`
`1985) (“On this evidence, we do not believe reasonably prudent purchasersare apt to be
`
`deceived.”).
`
`Asstated above, Applicant’s mark does not misdescribe the goods atissue.
`
`Evenif it did so, the refusal should be withdrawnsinceasto the critical question of
`
`consumerperception of “oryza”in relation to dietary supplements, the Internet evidence
`
`submitted in the Office Action does not show that the consuming public has been accustomed or
`
`exposedto seeing “oryza”in relation to dietary supplements. In the cases holding a term
`
`deceptively misdescriptive, “the deception usually comes from the fact that the product on which
`
`the term in question is used contains a significant ingredient whichis absent in the product in
`
`question but present in other products of the same kind.” R. J. Reynolds Tobacco Co., 226 USPQ
`
`at 179. Thus, the Office Action does not establish that the term “oryza” indicates any particular
`
`characteristic relating to these goods. Thus, there is no evidence in the record that reasonably
`
`

`

`prudent purchasers are apt to be deceived. See, e.g., Roux Labs. v. Clairol Inc., 427 F.2d 823,
`
`166 USPQ 34 (CCPA 1970) (HAIR COLOR SO NATURAL ONLY HER HAIRDRESSER
`
`KNOWSFOR SUREnot deceptively misdescriptive of hair coloring); Jn re Harrington, 219
`
`USPQ 854 (TTAB 1983) (COLLEGE ACADEMYnotdeceptively misdescriptive of special
`
`summerlearning programsfor gifted children in grades 4 to 8); Binney & Smith Inc. v. Magic
`
`Marker Indus., Inc., 222 USPQ 1003 (TTAB 1984) (LIQUID CRAYONnotdeceptively
`
`misdescriptive of marking pens whichare not liquified crayons); /n re Perfect Fit Indus., Inc.,
`
`223 USPQ 92 (TTAB 1984) (COTTAGE CRAFTSnot deceptively misdescriptive of
`
`bedspreads, quilts and like products); Jn re Econoheat, 218 USPQ 381 (TTAB 1983) (SOLAR
`
`QUARTZnot deceptively misdescriptive of electric space heaters that heat by infrared light).
`
`In view of the foregoing arguments, Applicant respectfully requests that the USPTO
`
`withdraw the refusals.
`
`

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