Response to Office Action

CLEAN MACHINE

FNA GROUP, INC.

NSE, INC

NSE, INC NSE, INC

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/30/2011)

Response to Office Action

The table below presents the data as entered.

Input Field

Entered

SERIAL NUMBER

77838400

LAW OFFICE ASSIGNED

LAW OFFICE 109

MARK SECTION (no change)

ARGUMENT(S)

In response to the Official Action of December 28, 2009, Applicant respectfully requests reconsideration of the Examiner's rejections in view of the following remarks.

SEARCH RESULT

Applicant acknowledges and appreciates the Examining Attorney's search of the office records and indication that no similar registered or pending mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).

REFUSAL - The Mark May Be Suggestive But Not "Merely Descriptive"

The goods for this application are "pressure washers, parts and accessories thereto," in International Class 7. Applicant acknowledges the refusal to register CLEAN MACHINE under §2(e)(1), alleging that the mark merely describes the goods."

Applicant respectfully observes that CLEAN MACHINE is not merely descriptive of the goods (pressure washers). At best, CLEAN MACHINE may be somewhat suggestive of pressure washers, and it is of course well established that a suggestive mark is registerable.

Although Applicant appreciates that previous registrations by the United States Patent and Trademark Office are not determinative of whether or not a term is properly registerable, prior registrations do provide an indication that certain terms are not merely descriptive when the Office has registered them on the Principal Register for similar goods as that of Applicant without requiring a disclaimer of a term in question, and without a §2(f) submission.

Prior registrations that incorporate "clean machine" for numerous parties for similar goods and over a wide length of time, are to be afforded full consideration as an indicator of a properly and consistently applied standard of "descriptiveness", to which Applicant is entitled full benefit. Accordingly, Applicant provides the following summary of registrations (in some cases of now-cancelled registrations) of marks that include the term "clean machine" (some of the registrations being in Class 7, the same as the present application):

Reg. No.	Mark	Goods
2684497	CLEAN MACHINE	electric pressure washers and machine parts for electric pressure washers.
3109930	KLEEN MACHINE (Design)	Robotic pool multi-cleaning system comprised of a water pump, filtration filters and parts thereof, a flow diversion controller, electrical motor, control circuitry, housing, axle and wheels.
3138806	SP3 THE CLEAN MACHINE (Stylized)	food packaging machinery.
2020669	LITTLE GREEN CLEAN MACHINE	electrical cleaning devices, namely carpet and upholstery cleaning extractors.
1976983	BIG GREEN CLEAN MACHINE	electrical cleaning devices; namely, a carpet upholstery cleaning extractor and vacuum cleaner.
1640378	CLEAN MACHINE (Design)	floor standing water purification unit which delivers hot or cold water for human consumption.
1531538	CLEAN MACHINE	All purpose vehicle cleaner

A copy of each of these registrations also is submitted with this response, so as to facilitate review thereof by the Examining Attorney. Each of the various registrations listed above is or was on the Principal Register, and each was registered without the benefit of a §2(f) submission. None disclaim "clean" or "kleen".

Applicant highlights cancelled Registration No. 2,684,497 which is for the identical mark and virtually identical goods (electric pressure washers and machine parts for electric pressure washers) as the present application. This mark was registered on the Principal register with a disclaimer of "machine." Thus, the USPTO has reached a contrary result to that asserted by the examiner and this is supportive of Applicant's position.

Furthermore, the Examining Attorney, in part, supports his refusal to register based on definitions of "clean" and "machine". The definition of "clean" that is quoted includes thirty-seven different definitions. Twenty-nine of those definitions are for "clean" used as a noun and the remaining six definitions are for "clean" used as a verb. Of the twenty-nine definitions as a noun only two have some relation to the function of a pressure washer and twenty-four are completely unrelated to a pressure washer. Some definitions of note are:

empty, morally upright, fair, not rude, blank, with no police record, free of problems, smooth-edged, streamlined, complete, not polluting, minimally radioactive, with no flaws, free of weeds, not heavily corrected, performed precisely, unaddicted, and innocent.

Three of the definitions for "clean" when used as a verb are completely unrelated to the function of a pressure washer. In addition, the definition quoted by the Examiner is one of the definitions for "clean" when used as a verb and Applicant notes that "clean" is not being used as verb in the applied for mark. Thus, the definition of clean, alone or in conjunction with machine, is not supportive of the proposition that it brings to mind a pressure washer.

Indeed, Applicant respectfully submits that the Office has not presented facts that establish "clean machine" is merely descriptive of pressure washers. A term is merely descriptive if it immediately conveys information conferring a quality, characteristic, function, ingredient, attribute, or feature of the product or service in connection with which it is used. In re Gyulay, 820 F.2d 1216 (Fed. Cir. 1987). This time-tested principle was recently reiterated by the TTAB in Anhueser-Busch, Inc. v. Holt, 92 U.S.P.Q.2d 1101 (2009).

Not only must the wording immediately impart information about the goods or services, but it must do so with a "degree of particularity." In re Intelligent Medical Systems Inc., 5 U.S.P.Q.2d 1674 (TTAB 1986). Further, the term must describe a significant attribute of Applicant's goods. Eden Foods, 24 U.S.P.Q. 2d 757, 760 (TTAB 1992). In other words, in finding matter to be "merely descriptive," there must be more than simply some connection between the mark and the goods. The relationship must be such that the mark conveys a readily understood meaning of the goods to the average purchaser. That is, a descriptive mark must convey information immediately, about a significant attribute of the goods to which it is applied, with particularity, and in a readily understood meaning.

Clearly, CLEAN MACHINE does not immediately describe the goods. Instead, CLEAN MACHINE requires a purchaser to apply thought and reasoning and make a mental pause (at the very least) and even in doing so, the purchaser is not likely to conclude that the mark concerns pressure washers. Simply put, the purchasing public would not immediately conclude that a "clean machine" would be associated with a pressure washer.

REFUSAL - "Appears" to be Generic

The examiner also states that the CLEAN MACHINE "appears" to be generic in connection with pressure washers. In response, Applicant reiterates its arguments with respect to the refusal to register under §2(e)(1) and again highlights Registration No. 2,684,497 for the identical mark for virtually the same goods. In addition, the Applicant notes U.S. Serial No. 77/882,614 for the identical mark in connection with "electric generators, multi-purpose high pressure washers, electric compressors, air powered tools, namely, drills, saws and electrical blowers" (emphasis added) which was filed one-month after the present application. The Examining Attorney of that pending application did not determine that CLEAN MACHINE was generic for pressure washers. See Office Action dated March 13, 2010.

CONCLUSION

It is noted that the Examining Attorney has the burden of establishing a prima facie case of mere descriptiveness. In re Gyulay, 3 U.S.P.Q.2d 1009 (Fed. Cir. 1987). As the Board stated in In re Shutts, 217 U.S.P.Q. 363 (TTAB 1983) regarding the mark SNO-RAKE:

[a]t the very least, however, we have doubts about the 'merely descriptive' character of the mark before us and, unlike the situation in determining likelihood of confusion under Section 2(d) of the Trademark Act, it is clear that such doubts are to be resolved in favor of applicants.

Id. at 365 (citations omitted) (emphasis added); see also In re Gracious Lady Service Inc., 175 U.S.P.Q. 388 (TTAB 1972). Any doubt as to whether a mark is merely descriptive must be resolved in favor of the Applicant. In re Atavio, 25 U.S.P.Q.2d 1361, 1362 TTAB 1992); In re Conductive Systems, 220 U.S.P.Q. 84 (TTAB 1983). Accordingly, Applicant respectfully requests the withdrawal of the descriptiveness refusal.

It is believed that all outstanding requirements which are identified in the Office Action have been addressed and satisfied by this response. Favorable consideration of this response and passage to publication are respectfully requested. Should Examiner believe further discussion regarding this response would expedite prosecution, the Examiner is invited to contact the Attorney of Record at the number listed.

EVIDENCE SECTION

EVIDENCE FILE NAME(S)

ORIGINAL PDF FILE

evi_6427135106-160606107_._73674385.pdf