Offc Action Outgoing

TEAS PLUS APPLICANTS MUST SUBMIT DOCUMENTS ELECTRONICALLY OR SUBMIT FEE: Applicants who filed their application online using the reduced-fee TEAS Plus application must continue to submit certain documents online using TEAS, including responses to Office actions. For a complete list of these documents, see TMEP §819.02(b). In addition, such applicants must accept correspondence from the Office via e-mail throughout the examination process and must maintain a valid e-mail address. 37 C.F.R. §2.23(a)(2); TMEP §§819, 819.02(a). TEAS Plus applicants who do not meet these requirements must submit an additional fee of $50 per international class of goods and/or services. 37 C.F.R. §2.6(a)(1)(iv); TMEP §819.04. Responding by telephone to authorize an examiner’s amendment will not incur this additional fee.

This Office action is in response to applicant’s communications filed on 11/25/2009 and again on 11/25/2009, 12/14/2009, 12/17/2009, 12/21/2009, 12/30/2009 and 01/06/2010. The substitute specimen is acceptable.

The applicant’s responses are confusing and very inconsistent. Several different people appear to have submitted the various responses which likely attributes to the confusion. Nevertheless, the examining attorney has reviewed the responses and has determined that the refusal under Section 2(e)(1) and other informalities remain outstanding and are thus continued.

Merely Descriptive

The applicant submitted several attempts to recite a claim of distinctiveness. However they remain unacceptable because the applicant failed to adopt the language explicitly stated in the prior office action.

Therefore, registration is still refused because the applied-for mark merely describes the effect of the applicant’s goods and their mild impact on the environment. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

Applicant seeks to register the mark GREEN SMOKE for “ELECTRONIC plastic cigarette shaped pipea that emit water vapor.”

The determination of whether a mark is merely descriptive is considered in relation to the identified goods and/or services, not in the abstract. In re Abcor Dev. Corp., 588 F.2d 811, 814, 200 USPQ 215, 218 (C.C.P.A. 1978); TMEP §1209.01(b); see, e.g., In re Polo Int’l Inc., 51 USPQ2d 1061 (TTAB 1999) (finding DOC in DOC-CONTROL would be understood to refer to the “documents” managed by applicant’s software, not “doctor” as shown in dictionary definition); In re Digital Research Inc., 4 USPQ2d 1242 (TTAB 1987) (finding CONCURRENT PC-DOS merely descriptive of “computer programs recorded on disk” where relevant trade used the denomination “concurrent” as a descriptor of a particular type of operating system). “Whether consumers could guess what the product is from consideration of the mark alone is not the test.” In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).

Because the term GREEN has become synonymous with environmentally friendly products, consumers will under stand from the mark GREEN SMOKE that the goods emit smoke that is safe for the environment. In the first office action, the examining attorney attached copies of third party registrations to show that GREEN is descriptive because it has been disclaimed for goods and services intended to reduce harmful emission to the environment. The evidence also shows that SMOKE is descriptive and has been disclaimed on the register for cigarettes, which the applicant is providing in an electronic form.

Therefore the examining attorney finds that the mark is descriptive and refuses registration under the Trademark Act §2(e)(1), 15 U.S.C. 1052(e)(1).

Inquiry

If the applicant responds to this refusal, the applicant must answer the following question: Do the goods reduce harm to the environment? This question must be answered as the information is needed to determine the registrability of the mark. If the applicant’s response to the inquiry is “No” then the mark will be refused registration under Section 2(a) and will not be registrable. 37 C.F.R. §2.61(b).

Goods

The wording “ELECTRONIC plastic cigarette shaped pipea that emit water vapor” in the identification of goods is indefinite and must be clarified because there is a misspelled word and the goods must indicate that they are safe for the environment since the mark itself includes the term “Green.” See TMEP §§1402.01, 1402.03.

Identifications of goods can be amended only to clarify or limit the goods; adding to or broadening the scope of the goods is not permitted. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. 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.

Applicant may substitute the following wording, if accurate:

Electronic cigarettes that emit water vapor and reduce harm to the environment. International Class 34.

Claim of Distinctiveness Based on Five Years Use

The applicant’s claim of distinctiveness is not acceptable because it is not clear. There are several misspelled words and the claim is not accompanied with a signed declaration.

The application record indicates that applicant has used its mark for a long time; therefore, applicant can seek registration on the Principal Register under Trademark Act Section 2(f), based on acquired distinctiveness. See 15 U.S.C. §1052(f); TMEP §1212.05.

To amend the application to Section 2(f) based on five years’ use, applicant should submit the following written statement claiming acquired distinctiveness, if accurate:

The mark has become distinctive of the goods and/or services through applicant’s substantially exclusive and continuous use in commerce for at least the five years immediately before the date of this statement.

TMEP §1212.05(d). Applicant must verify this statement with an affidavit or signed declaration under 37 C.F.R. §2.20. 37 C.F.R. §2.41(b); TMEP §1212.05(d); see 37 C.F.R. §2.193(e)(1).

If the applicant has any questions or needs assistance in responding to this Office action, please call or e-mail the assigned examining attorney.

/D. Beryl Gardner/

Examining Attorney

Law Office 112

571-272-9162 (office)

571-273-9162 (fax)

beryl.gardner@uspto.gov

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.