| To: | TUNG HING (USA) INDUSTRIAL CO. (charleszhang@msn.com) |
| Subject: | TRADEMARK APPLICATION NO. 78344567 - TOUCHLESS TRASHCAN - N/A |
| Sent: | 3/14/05 4:44:27 PM |
| Sent As: | ECOM113@USPTO.GOV |
| Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 78/344567
APPLICANT: TUNG HING (USA) INDUSTRIAL CO.
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: TOUCHLESS TRASHCAN
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS: |
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 78/344567
This letter responds to the applicant’s petition to revive filed on February 18, 2005.
The Office has reassigned this application to the undersigned trademark examining attorney. Furthermore, this Office action supersedes any previous Office action issued in connection with this application.
The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.
The examining attorney refuses registration on the Principal Register because the proposed mark merely describes the goods. Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1); TMEP §§1209 et seq.
A mark is merely descriptive under Trademark Act Section 2(e)(1), 15 U.S.C. 1052(e)(1), if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant goods. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re MetPath Inc., 223 USPQ 88 (TTAB 1984); In re Bright‑Crest, Ltd., 204 USPQ 591 (TTAB 1979); TMEP §1209.01(b).
The applicant applied to register TOUCHLESS TRASHCAN for “electronic trash can opened by electronic sensor without manual operation.” The word TOUCHLESS is commonly used to refer to an electronic device in which the user is not required to manually operate or touch the device in order to use it. The applicant should note the attached sampling of excerpts of articles collected on Nexis indicating that the term TOUCHLESS is commonly used to describe an electronic device. Thus, the word TOUCHLESS is merely descriptive of a feature of the applicant’s goods in that the trash cans may be opened without being manually operated or touched. The applicant states in its identification that the trash cans are not manually operated or operated by touch. The word TRASHCAN is the generic name for the applicant’s goods. The applicant states in its identification that the goods comprise trashcans. Thus, the proposed mark TOUCHLESS TRASCHCAN, in its entirety is merely descriptive of a feature of the goods and is the generic name for the goods and is refused registration on the Principal Register.
Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
Although the trademark examining attorney has refused registration on the Principal Register, applicant may respond to the stated refusal under Section 2(e)(1) of the Trademark Act by amending the application to seek registration on the Supplemental Register. Trademark Act Section 23, 15 U.S.C. §1091; 37 C.F.R. §§2.47 and 2.75(a); TMEP §§801.02(b), 815 and 816 et seq.
The applicant should note that if it amends to the Supplemental Register, then it may not amend to a Section 1(b), intent to use filing basis in response to the specimen requirement issued below. Intent to use applications are not eligible for registration on the Supplemental Register. See TMEP §§816 et seq.
Furthermore, the applicant should note that if it amends to the Supplemental Register, a disclaimer of the term TRASHCAN is required. The required disclaimer must be inserted if registration of the mark is sought on the Supplemental Register because TRASHCAN is generic in the context of applicant’s goods. The applicant states in its identification that the goods comprise trash cans. In re Wella Corp., 565 F.2d 143, 196 USPQ 7 (C.C.P.A. 1977); In re Creative Goldsmiths of Washington, Inc., 229 USPQ 766 (TTAB 1986); In re Carolyn’s Candies, Inc., 206 USPQ 356 (TTAB 1980); TMEP §1213.03(b).
The computerized printing format for the Office’s Trademark Official Gazette requires a standardized format for a disclaimer. TMEP §1213.08(a)(i). If the applicant amends to the Supplemental Register, the disclaimer must be submitted utilizing the following standard format used by the Office:
No claim is made to the exclusive right to use “TRASHCAN” apart from the mark as shown.
See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).
If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informalities.
The identification of goods is unacceptable as indefinite. TMEP §1402.01. To insure that the goods are properly identified and classified, the applicant must clarify that the goods are trash cans with lids opened by electronic sensors, if accurate.
Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, the applicant may not amend to include any goods that are not within the scope of the goods recited in the present identification. In addition, please note that this Office’s Identification of Goods and Services Manual is accessible on the USPTO’s home page at http://tess2.gov.uspto.report/netahtml/tidm.html.
The applicant may adopt the following identification, if accurate:
Trash can with a lid opened by an electronic sensor without manual operation.
An application based on use of the mark in commerce under Trademark Act Section 1(a), 15 U.S.C. §1051(a), must include a specimen showing use of the mark in commerce on or in
connection with the goods. TMEP §904. The application does not contain a specimen. The applicant
should note that while it may have attempted to attach a specimen to its application, the only information in the record is a sheet stating “no image attached.”
Accordingly, the applicant must submit a specimen, and must submit the following statement:
The specimen was in use in commerce at least as early as the filing date of the application.
This statement must be verified with an affidavit or a declaration under 37 C.F.R. §2.20. 37 C.F.R. §2.59(a); TMEP §904.09.
Examples of acceptable specimens for goods are tags, labels, instruction manuals, containers or photographs that show the mark on the goods or packaging.
If the applicant cannot comply with the requirement for a specimen of use for the Section 1(a) basis asserted, the applicant may substitute a different basis for filing if the applicant can meet the requirements for the new basis. See TMEP §§806.03 et seq.
In this case, the applicant may wish to amend the application to assert a Section 1(b) basis. To base the application on a bona fide intention to use the mark in commerce, the applicant must submit the following statement:
The applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods listed in the application since the filing date of the application.
This statement must be must be verified, i.e., supported either by an affidavit or by a declaration under 37 C.F.R. §§2.20 and 2.33. Trademark Act Section 1(b), 15 U.S.C. §1051(b); 37 C.F.R. §2.34(a)(2)(i); TMEP §806.01(b).
The applicant should note that if it amends to a Section 1(b) filing basis, it may not amend to the Supplemental Register in response to the descriptiveness refusal issued above. Intent to use applications are not eligible for registration on the Supplemental Register. See TMEP §§816 et seq.
The applicant must indicate the state in which the sole proprietorship is organized. TMEP §803.03(a).
Effective January 31, 2005 and pursuant to the Consolidated Appropriations Act, 2005, Pub. L. 108-447, the following are the fees that will be charged for filing a trademark application:
(1) $325 per international class if filed electronically using the Trademark Electronic Application System (TEAS); or
(2) $375 per international class if filed on paper
These fees will be charged not only when a new application is filed, but also when payments are made to add classes to an existing application. If such payments are submitted with a TEAS response, the fee will be $325 per class, and if such payments are made with a paper response, the fee will be $375 per class.
The new fee requirements will apply to any fees filed on or after January 31, 2005.
The Trademark Operation has relocated to Alexandria, Virginia. Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:
Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451
Applicants, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at http://www.gov.uspto.report/teas/index.html.
No set form is required for response to this Office action. The applicant must respond to each point raised. The applicant should simply set forth the required changes or statements and request that the Office enter them. The applicant must sign the response.
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
/Stacy B. Wahlberg/
Trademark Attorney
Law Office 113
(571) 272-9441
LO Fax (571) 273-9113
HOW TO RESPOND TO THIS OFFICE ACTION:
STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.
VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.
GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.
MAIL-IT REQUESTED: MARCH 14, 2005 10083K
CLIENT: DSFGDS
LIBRARY: REGNWS
FILE: ALLNWS
YOUR SEARCH REQUEST AT THE TIME THIS MAIL-IT WAS REQUESTED:
TOUCHLESS
NUMBER OF STORIES FOUND WITH YOUR REQUEST THROUGH:
LEVEL 1... 575
LEVEL 1 PRINTED
THE SELECTED STORY NUMBERS:
2-3,5,26
DISPLAY FORMAT: 38 VAR KWIC
SEND TO: WAHLBERG, STACY
TRADEMARK LAW LIBRARY
2101 CRYSTAL PLAZA ARC
MAILBOX 314
ARLINGTON VIRGINIA 22202-4600
**********************************07378**********************************
Copyright 2005 Post-Standard
All Rights Reserved.
The Post-Standard (Syracuse, New York)
February 21, 2005 Monday
FINAL EDITION
SECTION: NEWS; Pg. A1
LENGTH: 459 words
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BYLINE: By Nancy Buczek Staff writer
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... way.
Mark Weldon, SU's director of technology transfer and industrial development, said SU gives preference to Central and Upstate New York companies when commercializing a product, but in this case, the interested company isn't local.
San Jamar, a company that focuses on food safety and washroom products such as touchless paper towel dispensers, licensed Faiola's invention in October and plans to manufacture its version, the Kleen-Brush System, in May.
A similar scenario played out last year when two Rochester-area entrepreneurs licensed SU-owned technology in March to make the Zwislocki Ear Muffler.
The company, ...
Copyright 2005 Chicago Tribune Company
Chicago Tribune
February 5, 2005 Saturday
West Final Edition
SECTION: NEW HOMES ; ZONE W; Pg. 20
LENGTH: 906 words
HEADLINE: 'Look Ma, no hands' is among innovations for the home
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... Internet of things," a term being used by one home-automation company, is still a long way off.
It's probably more useful to focus on the here and now with a look at five home-theme items that will be available to consumers much sooner.
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Touchless faucets have become a mainstay in the commercial sector, and a number of small companies have begun offering portable versions for the home.
Now a big player, Indiana-based Delta Faucet Co., is weighing in with its Electronic Kitchen Concept Faucet from Brizo, its high-end brand. It will be ...
Copyright 2005 Wausau Daily Herald (Wausau, WI)
All Rights Reserved
Wausau Daily Herald
January 20, 2005 Thursday
SECTION: WEEKEND; Pg. 10WKEND
LENGTH: 1288 words
HEADLINE: No rest for restroom rater
BYLINE: David Paulsen
BODY:
... by chirping baby birds.
At the other end of the spectrum are the glorious restrooms, like the one at Loring Pasta Bar near the University of Minnesota. A good restroom, Thompson says, must be aesthetically pleasing but also functional. The restroom should be clean but not clinical, convenient but also unique.
He prefers touchless restrooms: Walk away and the toilet flushes. Wave your hand in front of a faucet for water. Restroom hardware salesmen, in fact, contact him sometimes to pick his brain on what equipment works.
Restroom technology is big business.
"There's a lot of solutions, I think, that haven't been found for the ...
Copyright 2004 Dolan Media Newswires
St. Charles County Business Record (St. Charles, MO)
September 16, 2004 Thursday
SECTION: NEWS
LENGTH: 612 words
HEADLINE: Westfield Shoppingtown gets spiffy for upcoming holidays
BYLINE: Amy Amour
BODY:
... mile radius, like the St. Louis Mills mall, said Edwards. Westfield Shoppingtown Chesterfield is also going through similar renovations, she said.
Mid Rivers mall renovations will include larger restrooms for both men and women on the upper level, near Famous Barr. The new facilities, equipped with touchless fixtures, will blend contemporary style with warm, earth-tone tiles. The two elevator towers in the mall will feature antique cherry wood veneers and stainless-steel doors.
In addition to redesigned signage and lighting, the food court will welcome a new restaurant in October. Subway ...