Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

FINAL 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: 7/1/2010

 

 

This final Office action responds to the applicant’s communication of June 9, 2010.

 

SECTION 2(e)(1) REFUSAL – MERELY DESCRIPTIVE

Registration was refused because the applied-for mark merely describes the use and purpose of applicant’s goods.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.  The examining attorney has carefully considered the applicant’s arguments in support of registration, but finds them unpersuasive.  Accordingly, the refusal to register is maintained and made FINAL.

 

A mark is merely descriptive if it describes a purpose, use, ingredient, quality, characteristic, function or feature of the specified goods.  TMEP §1209.01(b); see In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005); In re Gyulay, 820 F.2d 1216, 1217-18, 3 USPQ2d 1009, 1010 (Fed. Cir. 1987).   In this case, the mark is merely descriptive because it refers immediately to the use and purpose of the applicant’s goods.

 

The mark at issue is CLEAN MACHINE in standard characters for pressure washers, parts and accessories thereto.  As discussed in the first Office action, the term “machine” is defined as a “mechanical device:  a device with moving parts, often powered by electricity, used to perform a task, especially one that would otherwise be done by hand – a washing machine.”  Encarta World English Dictionary, online edition, accessed on December 26, 2009.  Please see this dictionary entry, which was attached to the first Office action and which is incorporated herein by reference.  Another dictionary entry reads, “an apparatus using mechanical power and having several parts, for performing a particular task.”  Please see the attached dictionary entry from Compact Oxford English Dictionary, accessed at www.askoxford.com on June 20, 2010.  The identification of goods shows that applicant’s goods are pressure washers.  The term “pressure washer” is defined as “a machine that sends out a strong stream of water, used for cleaning things.”  Please see the attached dictionary entry from the Cambridge Advanced Learners Dictionary, accessed at www.dictionary.cambridge.com on June 30, 2010.

 

As shown by these dictionary definitions alone, applicant’s goods are machines used for cleaning.  Moreover, the term “CLEAN” modifies the term “machine” in the mark.  The term “clean” is defined as “remove dirt: to get rid of unwanted dirt, stains, or marks.”   Ibid.  When combined, as in the applicant’s mark and as shown by the above dictionary definitions, these terms refer immediately to a machine used for cleaning.  As applicant’s goods consist of pressure washers, which are machines used for cleaning, the mark refers immediately to the use and purpose of the goods.

In addition to the above dictionary definitions, ample evidence exists demonstrating that pressure washers are machines used for cleaning surfaces and other objects.  For example, please see the attached article from ConsumerReports.org®, which discusses and reviews pressure washers.  The article reads in pertinent part:

Professional cleaning at a do-it-yourself price has helped pressure washers beyond the tool-rental shop and into your local home center.  Pressure washers use a gas engine or electric motor, pump, and concentrating nozzle to boost water pressure from your garden hose as much as 60 times. That lets them blast away deck mildew, driveway stains, and other grunge a hose can't touch while cleaning chairs, siding, and other items more quickly and easily than you could with a scrub brush.

Please also see the attached representative website screen shots from applicant’s competitors and others in applicant’s field which demonstrate that pressure washers are used for cleaning.  For example, the attached screen shot from Snapper.com describes the use of pressure washers as follows: 

Outdoor cleaning is a snap.  Easily power away dirt, grease and grime on all your outdoor cleaning projects. Restore items to a like-new condition or prep surfaces for painting and staining. The powerful Briggs & Stratton engines, quality stainless steel components and special features will make your cleaning projects fast and easy.

The evidence clearly shows that applicant’s goods, pressure washers, are machines used for cleaning.  As such, the mark refers immediately to the use and purpose of the goods.  Words or terms that describe the function or purpose of a product or service may be merely descriptive or generic.  TMEP §1209.03(p); see In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987) (holding SCREENWIPE generic for an anti-static cloth used for cleaning computer and television screens); In re Cent. Sprinkler Co., 49 USPQ2d 1194 (TTAB 1998) (holding ATTIC generic for sprinklers installed primarily in attics); In re Reckitt & Colman, N. Am. Inc., 18 USPQ2d 1389 (TTAB 1991) (holding PERMA PRESS generic for soil and stain removers for use on permanent press products).

 

Moreover, a mark that merely combines descriptive words is not registrable if the individual components retain their descriptive meaning in relation to the goods and/or services and the combination results in a composite mark that is itself descriptive.  TMEP §1209.03(d); see, e.g., In re King Koil Licensing Co. Inc., 79 USPQ2d 1048 (TTAB 2006) (holding THE BREATHABLE MATTRESS merely descriptive of “beds, mattresses, box springs and pillows”); In re Associated Theatre Clubs Co., 9 USPQ2d 1660, 1662 (TTAB 1988) (holding GROUP SALES BOX OFFICE merely descriptive of theater ticket sales services).  Such a mark is registrable only if the composite creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the goods and/or services.  See, e.g., In re Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968).

 

In this case, both the individual components and the composite result are descriptive of applicant’s goods and do not create a unique, incongruous or nondescriptive meaning in relation to the goods.  Specifically, the mark is in standard characters and contains no design or stylization to create a commercial impression other than the descriptive meaning of the mark.  The words themselves, both together and apart, refer only to a machine that cleans.  As the goods are machines that clean, the mark is merely descriptive of the goods.

 

The applicant cites several trademark registrations for marks which incorporate the wording “CLEAN MACHINE” and cover goods which are similar to the applicant’s goods.  These registrations are not probative because, as acknowledged by applicant, most have been cancelled and are no longer valid.  Only two remain in full force and effect, and, of these two, only one supports applicant’s position.  U.S. Trademark Registration No. 3138806 covers different goods, specifically, food packaging machinery.  While the other valid registration, U.S. Trademark Registration No. 3109930, covers a robotic pool multi-cleaning system comprised of various parts, it is far outweighed by the other evidence of record.  Taken as a whole, the preponderance of the evidence shows that the term “clean machine” refers simply and immediately to a machine that is used for cleaning.  As applicant’s goods are machines used for cleaning, the mark is merely descriptive of the goods.

 

Applicant further argues that the word “clean” has several meanings.  This argument is also not persuasive.  Descriptiveness is considered in relation to the relevant goods and/or services.  The fact that a term may have different meanings in other contexts is not controlling on the question of descriptiveness.  In re Chopper Indus., 222 USPQ 258, 259 (TTAB 1984); In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979); TMEP §1209.03(e).

 

Lastly, applicant argues that the mark is not generic.  While the first Office action mentioned that the mark might appear to be generic, such was and is not the subject of this refusal.  The evidence shows that the applicant’s mark is merely descriptive of the use and purpose of the goods.  It is for this reason that registration has been refused.

 

Accordingly, based on the evidence of record and for all of the reasons discussed above, the mark refers immediately to the use and purpose of the goods.  It therefore is merely descriptive, and the refusal to register is maintained and made FINAL.

 

ADVISORY:  SUPPLEMENTAL REGISTER

 

Although an amendment to the Supplemental Register would normally be an appropriate response to this refusal, such a response is not appropriate in the present case.  The instant application was filed under Trademark Act Section 1(b) and is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use meeting the requirements of 37 C.F.R. §2.76(b), (c) has been timely filed.  37 C.F.R. §2.47(d); TMEP §§816.02, 1102.03.

 

If applicant files an acceptable allegation of use and also amends to the Supplemental Register, the effective filing date of the application will be the date on which applicant met the minimum filing requirements of 37 C.F.R. §2.76(e) for the amendment to allege use.  37 C.F.R. §2.75(b); TMEP §§816.02, 1102.03.

 

Although registration on the Supplemental Register does not afford all the benefits of registration on the Principal Register, it does provide the following advantages:

                               

• The registrant may use the registration symbol ®;
• The registration is protected against registration of a confusingly similar mark under Trademark Act Section 2(d);
• The registrant may bring suit for infringement in federal court; and
• The registration may serve as the basis for a filing in a foreign country under the Paris Convention and other international agreements.

 

See 15 U.S.C. §§1052(d), 1091, 1094; TMEP §815.

 

ADVISORY:   DISCLAIMER

 

If applicant files an acceptable allegation of use and an amendment to the Supplemental Register, applicant must disclaim “MACHINE” because such wording appears to be generic in the context of applicant’s goods.  The definition of “pressure washer” above shows that such goods are machines.  As such, this word refers immediately to the class name and genus of the goods, has no trademark significance and is generic.  Consequently, it must be disclaimed even if applicant amends this application to seek registration on the Supplemental Register or pursuant to a claim of acquired distinctiveness under Trademark Act Section 2(f).  See 15 U.S.C. §1056(a);  In re Wella Corp., 565 F.2d  143, 196 USPQ 7 (C.C.P.A. 1977); In re Creative Goldsmiths of Wash., Inc., 229 USPQ 766 (TTAB 1986); TMEP §1213.03(b).

 

The following is the accepted format for a disclaimer:

 

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

 

TMEP §1213.08(a)(i).

 

RESPONDING TO THIS FINAL OFFICE ACTION

 

If applicant does not respond within six months of the date of issuance of this final Office action, the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond to this final Office action by:

 

(1)  Submitting a response that fully satisfies all outstanding requirements, if feasible; and/or

 

(2)  Filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class.

 

37 C.F.R. §§2.6(a)(18), 2.64(a); TBMP ch. 1200; TMEP §714.04.

 

In certain rare circumstances, a petition to the Director may be filed pursuant to 37 C.F.R. §2.63(b)(2) to review a final Office action that is limited to procedural issues.  37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

 

 

 

 

 

/Susan R Stiglitz/

Trademark Examining Attorney

USPTO

Law Office 109

571-272-9285 (tel)

571-273-9285 (fax)

susan.stiglitz@uspto.gov

 

 

TO RESPOND TO THIS LETTER:  Use the Trademark Electronic Application System (TEAS) response form at http://teasroa.gov.uspto.report/roa/.  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.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by (1) an individual applicant; (2) someone with legal authority to bind applicant (i.e., a corporate officer, a general partner, all joint applicants); or (3) an authorized attorney, if one is appointed to represent applicant. 

 

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.

 

 

 

 

 

                                                                

IMPORTANT NOTICE REGARDING YOUR TRADEMARK APPLICATION

 

Your trademark application (Serial No. 77838400) has been reviewed.   The examining attorney assigned by the United States Patent and Trademark Office (“USPTO”) has written a letter (an “Office action”) on 7/1/2010 to which you must respond (unless the Office letter specifically states that no response is required).  Please follow these steps:

 

1. Read the Office letter by clicking on this link http://tmportal.gov.uspto.report/external/portal/tow?DDA=Y&serial_number=77838400&doc_type=OOA&mail_date=20100701 OR go to  http://tmportal.gov.uspto.report/external/portal/tow and enter your serial number to access the Office letter.  If you have difficulty accessing the Office letter, contact TDR@uspto.gov.  

                                         

PLEASE NOTE: The Office letter may not be immediately available but will be viewable within 24 hours of this e-mail notification.

 

2. Contact the examining attorney who reviewed your application if you have any questions about the content of the Office letter (contact information appears at the end thereof).

 

3. Respond within 6 months, calculated from 7/1/2010 (or sooner if specified in the Office letter), using the Trademark Electronic Application System (TEAS) Response to Office Action form. If you have difficulty using TEAS, contact TEAS@uspto.gov. 

 

ALERT:

 

Failure to file any required response by the applicable deadline will result in the ABANDONMENT (loss) of your application.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.