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.

 

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(a), 2.65(a); TMEP §§711, 718.03.

 

SEARCH

 

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).

 

 

FAILURE TO FUNCTION AS A MARK

 

Registration is refused because the applied-for mark, as used on the specimen of record, merely identifies a process or system; it does not function as a trademark to identify and distinguish applicant’s goods from those of others and to indicate the source of applicant’s goods.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051-1052, 1127; see In re Griffin Pollution Control Corp., 517 F.2d 1356, 1358-59, 186 USPQ 166, 167 (C.C.P.A. 1975) (holding the wording OXINITE as used on the specimen is the name of a process to improve degradation of domestic and industrial organic wastes and does not constitute a trademark for goods identified as a mixture of gases used in that process); TMEP §§904.07(b), 1202; cf. Congoleum Corp. v. Armstrong Cork Co., 218 USPQ 528, 535 n.13 (TTAB 1983) (finding the wording INLAID COLOR as used in advertising and sales promotion literature is the name of a manufacturing process by which a floor covering is made and does not identify the intended floor covering itself).

 

A process or system is a way of doing something, and is not generally a tangible product.  Thus, the name of a process or system does not function as a trademark unless it is also used to indicate the source of the goods in the application.  See In re Griffin Pollution, 517 F.2d at 1358-59, 186 USPQ at 167.

 

Determining whether matter functions solely as the name of a process or system, or whether it also functions as a trademark to identify the source of the goods, is based on the manner in which the applied-for mark is used on the specimen and any other information of record pertaining to use of the mark.  See In re Safariland Hunting Corp., 24 USPQ2d 1380, 1381 (TTAB 1992);  TMEP §§1202, 1301.02(e). 

 

In this case, the clearly indicates that the mark identifies a process or system because the specimen of record indicates that KRYOHENIFEX is not a trademark to identify a tangible product but a system by which the applicant produces special effects.

 

MARK DIFFERS ON DRAWING AND SPECIMEN

 

The mark on the specimen disagrees with the mark on the drawing.  In this case, the specimen displays the mark as KRYOGENIFEX; and the drawing shows the mark as KRYOGENIFEX  with a design of a snowflake appearing to the left of the literal element. Also, the literal element of the mark displays the letters “KRYO” in a bold font.

 

An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each class of goods and/or services.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).  The mark on the drawing must be a substantially exact representation of the mark on the specimen.  37 C.F.R. §2.51(a); TMEP §807.12(a); see 37 C.F.R. §2.72(a)(1). 

 

The drawing of the mark can be amended only if the amendment does not materially alter the mark as originally filed.  37 C.F.R. §2.72(a)(2); see TMEP §§807.12(a), 807.14 et seq.  However, amending the mark in the drawing to conform to the mark on the specimen would be a material alteration in this case because the mark on the specimen creates a different commercial impression from the mark on the drawing.  Specifically, the mark as used on the specimen creates a different commercial impression because the design element is deleted, the font in the literal element appears differently and the prefix of the mark does not appear in bold.

 

Therefore, applicant must submit the following:

 

(1)  A substitute specimen showing use in commerce of the mark on the drawing.  See TMEP §807.12(a).; and

 

(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.”  See 37 C.F.R. §§2.59(a), 2.193(e)(1); 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); TMEP §904.05.

 

Examples of specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale.  See TMEP §§904.03 et seq.  Examples of specimens for services are signs, photographs, brochures, website printouts or advertisements that show the mark used in the actual sale or advertising of the services.  See TMEP §§1301.04 et seq.

 

If applicant cannot satisfy 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:  “Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods and/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), 2.193(e)(1).

 

Pending receipt of a proper response, registration is refused because the specimen does not show the applied-for mark in use in commerce as a trademark and/or service mark.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).

 

 

Class 11

 

In the identification of goods, applicant must specify the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases. To “specify” means to name in an explicit manner. The identification should set forth common names, using terminology that is generally understood. For products or services that do not have common names, the applicant should use clear and succinct language to describe or explain the item. Technical or esoteric language and lengthy descriptions of characteristics or uses are not appropriate.

 

The word “system” in the identification of goods is indefinite and must be amended to list the major parts or components of the system, as well as describe the nature, purpose and use of the system.  Applicant should use common generic terms when specifying the parts or components of the system.  See TMEP §§1401.02(a), 1402.01.

 

 

 

The applicant may adopt the following wording if accurate:

Special effects system for use as a vaporizer comprised of a cryogenic vaporizer, a control box, a optional humidifier, solenoids, metal pipelines and elbows, metal anchors and  a fluid outlet, in International Class 11.

Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.

 

For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.

 

MARK DESCRIPTION

 

Applicant has submitted a color drawing, but has not specified the colors claimed as a feature of the mark or provided a mark description that identifies the literal and design elements and specifies where all the colors appear in those elements.  Applications for marks depicted in color must include a complete list of all the colors claimed as a feature of the mark and a mark description of the literal and design elements that specifies where all the colors appear in those elements.  37 C.F.R. §§2.37, 2.52(b)(1); see TMEP §§807.07(a) et seq.  

 

If black, white and/or gray are not being claimed as a color feature of the mark, applicant must state that the colors black, white and/or gray represent background, outlining, shading and/or transparent areas and are not part of the mark.  TMEP §807.07(d).  Generic color names must be used in the color claim and mark description, e.g., magenta, yellow, turquoise.  TMEP §807.07(a)(i)-(a)(ii).

 

Therefore, applicant must provide a color claim and a mark description specifying where all the colors appear in the mark.  The following color claim and mark description are suggested, if accurate:

 

Color claim:  “The color blue is claimed as a feature of the mark.” and

 

Mark description:  “The mark consists of the following:  KRYOGENIFEX appearing in blue with a snowflake like design appearing to the lift.

 

PRIOR REGISTRATION

 

If applicant owns U.S. Registration No.  2928564, then applicant must submit for the application record a claim of ownership of this registration.  See 37 C.F.R. §2.36; TMEP §812.  See the attached copy of the registration.  See TMEP §812. 

 

Applicant may use the following format to claim ownership of the registration:

 

Applicant is the owner of U.S. Registration No.  2928564.

DELETE STANDARD CHARACTER DRAWING CLAIM

 

The drawing of the mark includes a design element and color; however, the application also includes a standard character claim.  A standard character drawing must show the mark depicted in Latin characters, Roman or Arabic numerals, with common punctuation or diacritical marks, with no design element or stylization of lettering/numbers, and no claim to any particular font style, size or color.  37 C.F.R. §2.52(a); TMEP §807.03(a).

 

Therefore, applicant must delete the standard character claim from the application.  The drawing of the mark will be processed as a special form drawing pursuant to 37 C.F.R. §2.52(b).  TMEP §807.03(c).

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §2.191; TMEP §§709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

/ekajubi/

Elizabeth N. Kajubi

Trademark Examining Attorney

Law Office 107

(571) 272-2727

elizabeth.kajubi@uspto.gov

 

TO RESPOND TO THIS LETTER:  Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  Please wait 48-72 hours from the issue/mailing date before using 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 Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/.  Please keep a copy of the complete TARR screen.  If TARR shows no change for more than six months, call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/teas/eTEASpageE.htm.