Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. 

 

Serial Number  76/510054

Mark:  INDUCTION SYSTEM CLEANER

 

The assigned examining attorney has reviewed the referenced application and determined the following:

 

No Conflicting Marks Noted

The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.

 

However, the applicant should note the following issue(s)/ground(s) for refusal:

 

Descriptiveness

The examining attorney refuses registration on the Principal Register because the proposed mark merely describes the goods.  Trademark Act § 2(e)(1), 15 U.S.C. § 1052(e)(1); TMEP § 1209 et seq.  A mark is merely descriptive under Trademark Act § 2(e)(1), 15 U.S.C. § 1052(e)(1), if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant goods.  In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987);  In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re MetPath Inc., 223 USPQ 88 (TTAB 1984); In re Bright‑Crest, Ltd., 204 USPQ 591 (TTAB 1979); TMEP § 1209.01(b).

 

Applicant’s proposed mark is INDUCTION SYSTEM CLEANER for goods identified as “FUEL INJECTION CLEANER CHEMICAL ADDITIVE.”  The applicant’s goods are an INDUCTION SYSTEM CLEANER and are used to CLEAN INDUCTION SYSTEMs.  See definition(s) below. As such, the proposed mark merely describes the identified goods and, thus, registration on the Principal Register is refused.

 

Acquired Distinctiveness under Section 2(f)

If the applicant believes that the mark has acquired distinctiveness, that is, that it has become a distinctive indicator of source for the goods/services, the applicant may amend to seek registration under Trademark Act Section 2(f), 15 U.S.C. §1052(f).  This Office will decide each case on its own merits.  The examining attorney will consider the following principal factors in this decision: (1) how long the applicant has used the mark; (2) the type and amount of advertising of the mark; and (3) the applicant’s efforts to associate the mark with the goods/services.  See Ralston Purina Co. v. Thomas J. Lipton, Inc., 341 F. Supp. 129, 173 USPQ 820 (S.D.N.Y. 1972); In re Packaging Specialists, Inc., 221 USPQ 917 (TTAB 1984); 37 C.F.R. §2.41; TMEP §§1212, 1212.01 and 1212.06.  This evidence may include specific dollar sales under the mark, advertising figures, samples of advertising, consumer or dealer statements of recognition of the mark, and any other evidence that establishes the distinctiveness of the mark as an indicator of source. 

 

Should the applicant amend to Section 2(f), the applicant would be required to insert a disclaimer of the generic wording “cleaner” in the application.  Trademark Act § 6, 15 U.S.C. § 1056; TMEP §§ 1213 and 1213.09(a)(i).  A properly worded disclaimer should read as follows:

 

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

 

Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

 

If the applicant has any questions or needs assistance in responding to this Office Action, please feel free to telephone the assigned examining attorney.

Wendy B. Goodman

/Wendy B. Goodman/

Trademark Attorney

Law Office 103

(703) 308-9103, x409

(703) 746-8103 (fax)

ecom103@uspto.gov

 

 

 

How to respond to this Office Action:

 

To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.

 

To respond formally via E-mail, visit http://www.gov.uspto.report/web/trademarks/tmelecresp.htm and follow the instructions.

 

To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.

 

To check the status of your application at any time, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.gov.uspto.report/

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.

 

in·duc·tion

in·duc·tion (în-dùk¹shen) noun

1.    a. The act or an instance of inducting. b. A ceremony or formal act by which a person is inducted, as into office or military service.

2.    Electricity. a. The generation of electromotive force in a closed circuit by a varying magnetic flux through the circuit. b. The charging of an isolated conducting object by momentarily grounding it while a charged body is nearby.

3.    Logic. a. The process of deriving general principles from particular facts or instances. b. A conclusion reached by this process.

4.                     Mathematics. A two-part method of proving a theorem involving a positive integral variable. First the theorem is verified for the smallest admissible value of the integer. Then it is proven that if the theorem is true for any value of the integer, it is true for the next greater value. The final proof contains the two parts.

5.    The act of inducing: induction of sleep.

6.                     Presentation of material, such as facts or evidence, in support of an argument or a proposition.

7.    A preface or prologue, as to a literary composition, especially an early English play.

8.                     Biochemistry. The process of initiating or increasing the production of an enzyme or other protein at the level of genetic transcription

Embryology. The change in form or shape caused by the action of one tissue of an embryo on adjacent tissues or parts, as by the diffusion of hormones or chemicals.[1]

 

sys·tem

sys·tem (sîs¹tem) noun

Abbr. syst.

1.    A group of interacting, interrelated, or interdependent elements forming a complex whole.

2.    A functionally related group of elements, especially:. a. The human body regarded as a functional physiological unit. b. An organism as a whole, especially with regard to its vital processes or functions. c. A group of physiologically or anatomically complementary organs or parts: the nervous system; the skeletal system. d. A group of interacting mechanical or electrical components. e. A network of structures and channels, as for communication, travel, or distribution.

3.    An organized set of interrelated ideas or principles.

4.    A social, economic, or political organizational form.

5.    A naturally occurring group of objects or phenomena: the solar system.

6.    A set of objects or phenomena grouped together for classification or analysis.

7.    A condition of harmonious, orderly interaction.

8.    An organized and coordinated method; a procedure. See synonyms at method.

9.    The prevailing social order; the establishment. Used with the: You can't beat the system.

 [Late Latin systêma, systêmat-, from Greek sustêma, from sunistanai, to combine : sun-, syn- + histanai, set up, establish.][2]

 

clean·er

clean·er (klê¹ner) noun

1.    One whose work or business is cleaning.

2.    A machine or substance used in cleaning.

3.   Often cleaners . A dry-cleaning establishment.[3]