UNITED STATES PATENT AND TRADEMARK OFFICE
|
SERIAL NO: 76/510054
APPLICANT: BG Products, Inc.
|
|
|
CORRESPONDENT ADDRESS: CLINTON G. NEWTON SHOOK, HARDY & BACON L.L.P. ONE KANSAS CITY PLACE 1200 MAIN STREET KANSAS CITY, MISSOURI 64105-2118 |
RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514
|
|
MARK: INDUCTION SYSTEM CLEANER
|
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: BGPI.105311
CORRESPONDENT EMAIL ADDRESS:
|
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
|
The Office has reassigned this application to the undersigned examining attorney.
This letter responds to the applicant's communication filed on March 15, 2004. As a new issue was raised by the claim of acquired distinctiveness, this action is non-final.
Five Years’ Use Insufficient to Establish Distinctiveness
The mark in this application was refused registration on the grounds that it is descriptive of the goods, namely, “fuel injection cleaner chemical additive.” The applicant has claimed that the mark has acquired distinctiveness based on at least five years of substantially exclusive and continuous use in commerce.
The amount and character of evidence needed to establish acquired distinctiveness depends on the facts of each case and particularly on the nature of the mark sought to be registered. See Roux Laboratories, Inc. v. Clairol Inc., 427 F.2d 823, 166 USPQ 34 (C.C.P.A. 1970); In re Hehr Mfg. Co., 279 F.2d 526, 126 USPQ 381 (C.C.P.A. 1960); In re Gammon Reel, Inc., 227 USPQ 729 (TTAB 1985). More evidence is needed where a mark is so highly descriptive that purchasers seeing the matter in relation to the named goods and/or services would be less likely to believe that it indicates source in any one party. See, e.g., In re Bongrain International Corp., 894 F.2d 1316, 13 USPQ2d 1727 (Fed. Cir. 1990); In re Seaman & Associates, Inc., 1 USPQ2d 1657 (TTAB 1986); In re Packaging Specialists, Inc., 221 USPQ 917 (TTAB 1984). However, no amount of purported proof that a generic term has acquired secondary meaning can transform that term into a registrable trademark. Such a designation cannot become a trademark under any circumstances. See Miller Brewing Co. v. G. Heileman Brewing Co., 561 F.2d 75, 195 USPQ 281 (7th Cir. 1977), cert. denied, 434 U.S. 1025, 196 USPQ 592 (1978).
Additional evidence is needed to support the claim of distinctiveness here. Applicant’s allegation of five years’ use alone is insufficient evidence of distinctiveness in this case because applicant’s mark is highly descriptive of the goods and/or services. TMEP §1212.05(a). In re Kalmbach Publishing Co., 14 USPQ2d 1490 (TTAB 1989).
Applicant must establish acquired distinctiveness by a preponderance of the evidence. Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001 (Fed. Cir. 1988). 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. The Office will decide each case on its own merits.
If additional evidence is submitted, the following factors will be considered when assessing its sufficiency: (1) how long applicant has used the mark; (2) the type and amount of advertising of the mark; and (3) applicant’s efforts to associate the mark with the goods and/or 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 et seq.
Attached to this action are some articles drawn from the Lexis®/Nexis® database as well as Internet search evidence which support the argument that INDUCTION SYSTEM CLEANER for “fuel injection cleaner chemical additive” is highly descriptive or generic.
Accordingly, the refusal under Section 2(e)(1) is maintained and continued. As the refusal of the mark as a whole based on descriptiveness is continued, the disclaimer of “CLEANER” is noted but not accepted unless and until the claim of acquired distinctiveness is effected.
/Heather D. Thompson/
Trademark Examining Attorney
Law Office 103
703.308.9103 ext. 223 [phone]
703.746.8103 [fax]
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 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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.
108B8C
Print Request: Selected Document(s): 1,2
Time of Request: April 21, 2004 12:51 PM EDT
Number of Lines: 66
Job Number: 1822:0:13969444
Client ID/Project Name:
Research Information:
News, All (English, Full Text)
"induction system cleaner
Send to: THOMPSON, HEATHER
TRADEMARK LAW LIBRARY
2101 CRYSTAL PLAZA ARC
MAILBOX 314
ARLINGTON, VIRGINIA 22202-4600
1 of 2 DOCUMENTS
Copyright 2000 Information Access Company,
a Thomson Corporation Company;
ASAP
Copyright 2000 Advanstar Communications, Inc.
Aftermarket Business
February 1, 2000
SECTION: Pg. 37 ; ISSN: 0892-1121
IAC-ACC-NO: 59733464
LENGTH: 91 words
HEADLINE: Induction system cleaner; Brief Article
BODY:
Wynn's Oil Company introduces its Induction System Cleaning Kit that provides simple, but preventative maintenance service of induction systems. It gives the user flexibility to clean the complete fuel system and EGR (exhaust gas recirculation) passageways; features color- coded EGR adapter plates for servicing a wide variety of vehicles; and allows for simultaneous or separate applications of Wynn's Fuel System products with the flexibility for product application using engine vacuum or pressure provided by shop air.
Circle 264
IAC-CREATE-DATE: April 17, 2000
LOAD-DATE: April 18, 2000
2 of 2 DOCUMENTS
Copyright 1997 Newsday, Inc.
Newsday (New York)
November 8, 1997, Saturday, NASSAU AND SUFFOLK EDITION
SECTION: PART II; Page B23
LENGTH: 333 words
HEADLINE: CARS
BYLINE: By Bob Sikorsky
BODY:
Q. My 1994 Lincoln Mark performs beautifully. The dealer is trying to sell me an induction-system cleaning for $109. Is such a service worthwhile?
A. In my opinion, it's not.
Your car, by your statement, is performing "beautifully," and you are no doubt using a high-grade, high-detergent, "clean" gasoline, one that already has some type of induction-system cleaner as part of its additive package. To me, it would be a waste of money to clean a system that is probably already clean.
Keep using quality gasoline, and you shouldn't need any type of induction cleaning.
Read on for more on gasoline.
Q. I have a 1991 Cadillac, and I am using premium gasoline because that is what my owner's manual says to do.
I have friends who tell me that I am wasting money by using premium. My friends indicate that the car manufacturers are in cahoots with the oil companies.
Should I put regular gas in the car and ignore the owner's manual?
A. Some friends you have.
Do those same friends tell you that in many other owner's manuals, the manufacturer recommends regular gasoline instead of premium? Nah, I bet they don't.
Premium is specified for a purpose: The car runs better with it, and the engine will last longer using it. Especially now that your car is almost seven years old, you would notice a distinct difference in the way it runs if you switched to regular.
Remember, as I've said many times in this space, as cars age, they require more octane - not less, as your friends suggest - to give comparable performance.
Q. We recently acquired a 1990 Buick Century with 52,000 miles. The car runs beautifully, but the only problem is that the motor has a whine in it when it is running.
We hope you can tell us what causes the whine.
A. I don't mean to whine, but I need more information other than that your engine whines.
Questions or comments of general interest can be addressed to Bob Sikorsky, c/o Newsday, 235 Pinelawn Rd., Melville, N.Y. 11747-4250.
LOAD-DATE: November 8, 1997
108B8C
Print Request: Selected Document(s): 1,10,11,14,15,19,21,24,26,30
Time of Request: April 21, 2004 12:49 PM EDT
Number of Lines: 230
Job Number: 1822:0:13969036
Client ID/Project Name:
Research Information:
News, All (English, Full Text)
"induction system" w/10 ("fuel injection" or "fuel injector")
Send to: THOMPSON, HEATHER
TRADEMARK LAW LIBRARY
2101 CRYSTAL PLAZA ARC
MAILBOX 314
ARLINGTON, VIRGINIA 22202-4600
1 of 140 DOCUMENTS
Copyright 2004 Grand Forks Herald
All Rights Reserved
Grand Forks Herald
March 21, 2004 Sunday
SECTION: LOC
LENGTH: 139 words
HEADLINE: Keep your car on the road with preventive maintenance
BODY:
...your tires rotated every 6,000 to 10,000 miles.
- Tune up your car regularly. Replace long-life spark plugs at 35,000 to 40,000 miles, and change or clean the fuel filter, fuel injectors and induction system every 24,000 to 30,000 miles.
10 of 140 DOCUMENTS
Copyright 2004 by PRIMEDIA Business Magazines & Media Inc.
"All Rights Reserved"
Ward's Auto World
January 1, 2004
SECTION: ISSN: 50; Pg. 1
LENGTH: 8914 words
HEADLINE: A Decade of 10 Best
BODY:
...related bugaboos, which primarily were related to emissions and fuel economy.
The "High-Power" version of the Renesis is differentiated from the standard-power version that generates 197 hp by virtue of a more-complex variable-tract induction system, three rather than two fuel injectors per rotor and an elaborate intake port design that incorporates an extra port governed by a rotating valve that Mazda engineers say effectively amounts to variable valve timing for ...
LOAD-DATE: January 12, 2004
11 of 140 DOCUMENTS
Copyright 2003 Post-Standard, All Rights Reserved.
The Post-Standard (Syracuse, NY)
November 30, 2003 Sunday
SECTION: AUTO; Pg. G1
LENGTH: 539 words
HEADLINE: ROUTINE WORK CAN HELP PASS INSPECTION
BYLINE: RICK KENT CONTRIBUTING WRITER
BODY:
In other cases, problems with the exhaust gas re-circulation valve or evaporative emissions system will require additional services. Many problems stemming from carbon buildup in the fuel injection and air induction system can be avoided if a regular maintenance plan is followed.
Routinely adding a bottle of fuel injector cleaner to a full tank of gas every oil change will help minimize carbon ...
14 of 140 DOCUMENTS
Copyright 2003 The Charlotte Observer
All Rights Reserved
Charlotte Observer (North Carolina)
September 2, 2003 Tuesday ONE-THREE EDITION
SECTION: MAIN; News2Use. Your Guide to Everday Life - DRIVING; Pg. 2A
LENGTH: 207 words
HEADLINE: TO SCORE EXTRA SAVINGS, KEEP THAT OLD CAR IN SHAPE
BYLINE: KNIGHT RIDDER, SOURCE: WWW.CARS.COM
BODY:
...inspected with each oil change.
Tune it up - before 100,000 miles. Long-life spark plugs should be replaced at 35,000 to 40,000 miles and certainly at 60,000 miles. The fuel filter, fuel injectors and induction system should be changed or cleaned every 2-3 years or 24,000 to 30,000 miles.
"I sent two daughters through college and graduate school in high-mileage vehicles and have a 13-year-old ...
15 of 140 DOCUMENTS
Copyright 2003 Micromedia Limited
Canadian Business and Current Affairs
Copyright 2003 Business Information Group, Rogers Publishing Ltd.
PurchasingB2B
September, 2003
SECTION: S'03; ISSN: 0008-3917
CBCA-ACC-NO: 5860040
LENGTH: 809 words
HEADLINE: Power plant: Ford's new power stroke 6L diesel (Record in progress)
BYLINE: Elmer, Howard J
BODY:
...Four valves per cylinder, hydraulic roller
Displacement: 363 cubic inches / 5,924 cc Bore: 3.74 inches / 95.0 mm
Stroke: 4.13 inches / 105.0 mm Compression Ratio: 18:0:1 Fuel Injection:
Hydraulic rail fuel injection Induction System: EVRTTM
electronically-controlled turbocharger Emission Controls:
Electronically-controlled exhaust-gas recirculation Transmission:
Five-speed TorqShift automatic Towing Capacity: 20,000-pound max gross
combined weight of vehicle and ...
19 of 140 DOCUMENTS
Copyright 2003 The Indianapolis Star
All Rights Reserved
The Indianapolis Star
August 1, 2003 Friday Final Edition
SECTION: SPECIAL SECTION; Pg. 2R
LENGTH: 700 words
HEADLINE: Dissecting a Winston Cup car
BODY:
...Carburetor
Passenger Pontiac Grand Prix
Chassis Design: Front-wheel drive
Type: Unitized body
Steering: Rack-and-pinion
Engine Type: 3800 V6
Horsepower: 200 hp @ 5,200 rpm
Induction System: Fuel injection
__________________________________________
Aerodynamics and drafting
Aerodynamics, the way air flows over the car, plays an important role at the larger racetracks. This is where drafting becomes important. Drafting is sort of like driving behind a semi- ...
21 of 140 DOCUMENTS
Copyright 2003 Gale Group, Inc.
ASAP
Copyright 2003 Reed Business Information
Automotive Industries
July 1, 2003
SECTION: No. 7, Vol. 183; Pg. 42; ISSN: 1099-4130
IAC-ACC-NO: 105659484
LENGTH: 1667 words
HEADLINE: Minivan redefined: Nissan seeks to change minivan basics with its new Quest; Product; Product/Service Evaluation
BYLINE: Wielgat, Andrea
BODY:
...Horsepower: 240 @ 5,800 RPM
Torque: 242 ft-lbs. @4,400 rpm
Bore & Stroke (mm): 95.5 x 81.4.
Compression ratio (:1): 10.3
Maximum engine speed: 6,500 rpm
Induction system: sequential multi-point electronic fuel injection
Valvetrain: 4-valves per cylinder CVTC
Engine mounts: electronically controlled
Emissions certification level: LEV2/LEV emission standards
Emission system: Oxygen sensor, catalyzer
Exhaust: Singe tailpipe ...
24 of 140 DOCUMENTS
Copyright 2003 New Mexican, Inc.
Santa Fe New Mexican (New Mexico)
March 8, 2003 Saturday
SECTION: CARS AND TRUCKS; Pg. E-1
LENGTH: 756 words
HEADLINE: INSURGENT RACER
BYLINE: BARRY WINFIELD
BODY:
...an amazing array of new features, including new 41mm inverted Kayaba forks and radial-mount front disc brakes, both unique in the 600 segment. The ZX-6s also feature electronic fuel injection with a new centrally located ram-air system to pressurize the bike's induction system and lightweight LED taillights.
As usual in this class, great care was taken to pare ounces off the machine's weight. The new ZX-6R has shorter cylinders and cylinder heads than last year, plus shorter ...
26 of 140 DOCUMENTS
Copyright 2003 The Tribune Co. Publishes The Tampa Tribune
Tampa Tribune (Florida)
February 9, 2003, Sunday, FINAL EDITION
SECTION: SPECIAL SPORTS, Pg. 3
LENGTH: 752 words
HEADLINE: Nascar Preview
BODY:
...16 in. x 6.5 in. 15 in. x 9.5 in.
Tires: P225/60R16 28 x 12.00 x 15 in.
Engine
Type: 3800 V6 5.7L V8
Induction system: Fuel injection 830 cfm 4-barrel
Horsepower: 240 hp @5,200 rpm 715 hp @7,800 rpm
Transmission
Type: 4-speed automatic 4-speed manual
Capacities
Fuel system: 18.0 ...
30 of 140 DOCUMENTS
Copyright 2002 Contra Costa Times
All Rights Reserved
Contra Costa Times (California)
July 19, 2002 Friday
SECTION: F; Pg. 4
LENGTH: 526 words
HEADLINE: Some maintenance not listed in manual is good for car;
AUTO PLUS
BYLINE: KNIGHT RIDDER NEWSPAPERS
BODY:
...makes no mention, and the dealer did not recommend its use. I would rather use synthetic.
Howard Lee, San Jose, Calif.
A I'm all for taking good care of machinery, but fuel-injector and induction-system cleaning every 30,000 miles is a bit rich for my blood unless the vehicle has high mileage or runs poorly.
Same with packing the wheel bearings. This job was specified on older Mazda ...