UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/694946
MARK: HITAK POLYURETHANE S
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CORRESPONDENT ADDRESS: |
RESPOND TO THIS ACTION: http://www.gov.uspto.report/teas/eTEASpageD.htm
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/main/trademarks.htm
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APPLICANT: Aviation Device & Electronic Components, ETC.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62, 2.65(a); TMEP §§711, 718.03.
Office Records Searched
The applicant must insert a disclaimer of “POLYURETHANE” in the application because it describes a material component/ingredient of applicant’s goods. See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a). When used in conjunction with applicant’s goods/services, the wording immediately indicates to consumers that the applicant’s goods/services contain polyurethane. See applicant’s identification of goods, which identifies applicant’s goods as “polyurethane sealer for use in sealing the connection points between aircraft parts.”
A word or term that is the name of a key ingredient, characteristic or feature of the goods and/or services can be generic for those goods and/or services and thus, incapable of distinguishing source. A term does not need to be the name of the goods and/or services to be found incapable of serving as an indicator of origin. In re Sun Oil Co., 426 F.2d 401, 165 USPQ 718 (C.C.P.A. 1970) (holding CUSTOM BLENDED generic for gasoline); In re Helena Rubenstein, Inc., 410 F.2d 438, 161 USPQ 606 (C.C.P.A. 1969) (holding PASTEURIZED generic for face cream); Roselux Chem. Co. v. Parsons Ammonia Co., 299 F.2d 855, 132 USPQ 627 (C.C.P.A. 1962) (holding SUDSY generic for ammonia); In re Eddie Z's Blinds & Drapery, Inc., 74 USPQ2d 1037 (TTAB 2005) (holding BLINDSANDDRAPERY.COM generic for online retail store services featuring blinds, draperies and other wall coverings); In re Candy Bouquet Int’l, Inc., 73 USPQ2d 1883 (TTAB 2004) (holding CANDY BOUQUET generic for “retail, mail, and computer order services in the field of gift packages of candy”); In re Reckitt & Colman, N. Am. Inc., 18 USPQ2d 1389 (TTAB 1991) (holding PERMA PRESS generic for soil and stain removers); In re Ricci-Italian Silversmiths, Inc., 16 USPQ2d 1727 (TTAB 1990) (holding ART DECO generic for flatware); In re Hask Toiletries, 223 USPQ 1254 (TTAB 1984) (holding HENNA ‘N’ PLACENTA generic of ingredients for hair conditioner); A.J. Canfield Co. v. Honickman, 808 F.2d 291, 1 USPQ2d 1364 (3d Cir. 1986) (holding CHOCOLATE FUDGE generic for diet sodas); see TMEP §§1209.01(c) et seq.
The following is the accepted standard format for a disclaimer:
No claim is made to the exclusive right to use “POLYURETHANE” apart from the mark as shown.
TMEP §1213.08(a)(i).
Please note that a “disclaimer” is a statement that applicant does not claim exclusive rights to an unregistrable component of a mark; however, a disclaimer does not affect the appearance of the applied-for mark. See TMEP§1213.
Type of Mark Must Be Clarified
The drawing shows the mark with some degree of stylization; thus, it is not clear whether applicant intends to depict the mark in standard characters or in a special form drawing format. TMEP §807.03(h).
If a standard character drawing was intended, then applicant must submit the following statement: “The mark consists of standard characters without claim to any particular font, style, size, or color.” 37 C.F.R. §2.52(a); TMEP §807.03(a). If a special form drawing was intended, then applicant must state so for the record. See 37 C.F.R. §2.52(b); TMEP §§807.04 et seq.
A special form drawing, on the other hand, shows the mark in stylized letters and/or with a design element and provides protection for only that specific rendering. See 37 C.F.R. §2.52(b); TMEP §§807.04 et seq.
Specimen
The specimen is not acceptable as evidence of actual trademark use because it is not clear what the specimen is depicting (e.g. is it a label for the goods). Thus it fails to show proper use on the goods or on packaging of the goods.
Therefore, applicant must submit the following:
(1) A substitute specimen showing the mark in use in commerce for the goods specified in the application.
(2) The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “The substitute specimen was in use in commerce at least as early as the filing date of the application.” 37 C.F.R. §2.59(a); TMEP §904.05. If submitting a specimen requires an amendment to the dates of use, applicant must also verify the amended dates. 37 C.F.R. §2.71(c).
Examples of specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the goods or packaging, or displays associated with the goods at their point of sale. TMEP §§904.03 et seq.
If applicant cannot satisfy the above requirements, applicant may amend the Section 1(a) filing basis (use in commerce) to Section 1(b) (intent to use basis), for which no specimen is required. However, should applicant amend the basis to Section 1(b), registration cannot be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen. 15 U.S.C. §1051(c); 37 C.F.R. §§2.76, 2.88; TMEP Chapter 1100.
In order to amend to Section 1(b), applicant must submit the following statement, verified with an affidavit or a signed declaration under 37 C.F.R. §2.20: “Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the filing date of the application.” 15 U.S.C. §1051(b); 37 C.F.R. §§2.34(a)(2), 2.35(b)(1); TMEP §806.03(c).
Pending a proper response, registration is refused because the specimen does not show the applied-for mark in use in commerce as a trademark. 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56; TMEP §§904, 904.07(a).
Drawing Does Not Match Specimen – Applies Only if Applicant’s Mark is a Special Form Drawing
The mark on the drawing must be a substantially exact representation of the mark as used on or in connection with the goods and/or services, as shown by the specimen. 37 C.F.R. §2.51(a); TMEP §807.12(a); see 37 C.F.R. §2.72(a)(1).
Therefore, applicant must submit one of the following:
(1) A new drawing of the mark that agrees with the mark on the specimen but does not materially alter the original mark. See 37 C.F.R. §2.72(a); TMEP §§807.12(a), 807.14 et seq.; or
(2) A substitute specimen showing use in commerce of the mark on the drawing, and the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §§2.20, 2.33: “The substitute specimen was in use in commerce at least as early as the filing date of the application.” See 37 C.F.R. §2.59(a); TMEP §§807.12(a), 904.05. If submitting a specimen requires an amendment to the dates of use, applicant must also verify the amended dates. 37 C.F.R. §2.71(c); TMEP §904.05.
If applicant cannot satisfy one of the above requirements, applicant may amend the application from a use in commerce basis under Trademark Act Section 1(a) to an intent to use basis under Section 1(b), for which no specimen is required. See TMEP §806.03(c). However, if applicant amends the basis to Section 1(b), registration will not be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen. See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.
To amend to Section 1(b), applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §§2.20, 2.33: “Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the filing date of the application.” 37 C.F.R. §2.34(a)(2); TMEP §806.01(b); see 15 U.S.C. §1051(b); 37 C.F.R. §2.35(b)(1).
Signature
The application was not signed and verified, which are application requirements. 15 U.S.C. §1051(a); 37 C.F.R. §§2.33, 2.34(a)(1). Therefore, applicant must verify, in a signed affidavit or declaration under 37 C.F.R. §§2.20, 2.33, the statements specified further below. 15 U.S.C. §1051(a)(3); 37 C.F.R. §2.33(b)(1), (c); TMEP §§804.02, 806.01(a).
If applicant responds to this Office action online via the Trademark Electronic Application System (TEAS), applicant may satisfy this requirement by answering “yes” to the TEAS response form wizard question relating to submitting a “signed declaration,” and properly signing the declaration appearing towards the end of the TEAS response form by either (1) entering in the signature block any combination of letters, numbers, spaces and/or punctuation marks that the filer has adopted as a signature, placed between two forward slash (/) symbols (e.g., /john doe/); (2) e-mailing the completed form from within TEAS to a second party for his/her electronic signature, which will then be automatically returned to the original preparer for submission with the response form; or (3) attaching a jpg or pdf image of a declaration under 37 C.F.R. §2.20 (see statements and declaration paragraphs below), together with a pen-and-ink signature. See 37 C.F.R. §§2.33(d), 2.193(c)(1)(iii); TMEP §804.05. For each method, applicant must either personally sign or manually enter his/her electronic signature and provide the date of “signing.” TMEP §804.05; see TMEP §804.01(b). Applicant should also set forth the signatory’s name and position beneath the signature. See TMEP §§712 et seq., 804.05.
If applicant responds to this Office action on paper, via regular mail, applicant may satisfy this requirement by providing the following statements and declaration at the end of the response, personally signed and dated. See 37 C.F.R. §§2.20, 2.33; TMEP §§804.02, 804.05, 806.01(a).
STATEMENTS: He/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered; the applicant is using the mark shown in the drawing; that the mark is in use in commerce and was in use in commerce on or in connection with the goods and/or services listed in the application as of the application filing date; the specimen was in use in commerce as of the filing date of the application; that the facts set forth in the application are true and correct; that to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive.
DECLARATION: The undersigned being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements and the like may jeopardize the validity of the application or document or any registration resulting therefrom, declares that all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.
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(Signature)
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(Print or Type Name and Position)
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(Date)
Responding to this Office Action
There is no required format or form for responding to an Office action. The Office recommends applicants use the Trademark Electronic Application System (TEAS) to respond to Office actions online at http://www.gov.uspto.report/teas/index.html. However, if applicant responds on paper via regular mail, the response should include the title “Response to Office Action” and the following information: (1) the name and law office number of the examining attorney, (2) the serial number and filing date of the application, (3) the mailing date of this Office action, (4) applicant’s name, address, telephone number and e-mail address (if applicable), and (5) the mark. 37 C.F.R. §2.194(b)(1); TMEP §302.03(a).
The response should address each refusal and/or requirement raised in the Office action. If a refusal has issued, applicant can argue against the refusal; i.e., applicant can submit arguments and evidence as to why the refusal should be withdrawn and the mark should register. To respond to requirements, applicant should set forth in writing the required changes or statements and request that the Office enter them into the application record.
The response must be personally signed or the electronic signature manually entered by applicant or someone with legal authority to bind applicant (i.e., a corporate officer of a corporate applicant, the equivalent of an officer for unincorporated organizations or limited liability company applicants, a general partner of a partnership applicant, each applicant for applications with multiple individual applicants). TMEP §§605.02, 712.
/Meghan Reinhart/
Trademark Examining Attorney
Law Office 108
Phone - (571) 272-2943
Fax - (571) 273-9108
RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.gov.uspto.report/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail. For technical assistance with the form, please e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned examining attorney. Do not respond to this Office action by e-mail; the USPTO does not accept e-mailed responses.
If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response. Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.
STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov. When conducting an online status check, print and maintain a copy of the complete TARR screen. If the status of your application has not changed for more than six months, please contact the assigned examining attorney.