UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION / ELECTRONIC RESPONSE

 

 

RESPONSE TIME LIMIT:  THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE.  You may respond via regular mail to the address listed above, or electronically via the link noted below.  In the body of the response, please clearly state the applicant’s name, mark, serial number, Law Office and Examining Attorney.  Also, e-mail responses must (1) include the entire response as e-mail text, not as an attachment; (2) list the serial number in the “Subject” line; (3) be signed electronically (using the same format accepted for electronically filed applications - the signatory must enter any combination of alpha/numeric characters that has been specifically adopted to serve the function of the signature, preceded and followed by the forward slash (/) symbol. Acceptable “signatures” could include: /john doe/; /jd/; and /123-4567/.  (See 64 FR 33056, 33062 (June 21, 1999))); (4) include any attachments, specimens or evidence in JPG or GIF format only, and (5) address every issue raised.

 

Formal electronic responses to be submitted via: http://www.gov.uspto.report/teas/index.html

 

 

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

Serial Number  78/657478

 

The assigned trademark examining attorney reviewed the referenced application filed on June 24, 2005, and has determined the following.

 

Office Records Searched

 

The Office records have been searched and 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).  TMEP §704.02.

 

However, the applicant should note the following statutory refusal:

 

Mark is Merely Descriptive

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 section 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 good.  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 section 1209.01(b).

The applicant applied to register the mark AQUA-ICE for filled, sealed trays of purified water to be frozen for consumption. According to the electronic version of The American Heritage Dictionary of the English Language, (Third Edition 1992), “aqua” is defined as, “Water,”[1] and “ice” is defined as, “Water frozen solid.”[2] In other words, AQUA-ICE  refers to the goods, a feature of the goods, characteristics of the goods, the purpose of the goods, and how the goods function – AQUA-ICE for filled, sealed trays of purified water to be frozen for consumption – AQUA-ICE for goods used to make water into ice.

Consequently, the examining attorney refuses registration on the Principal Register because the proposed mark merely describes the purpose and function of the identified goods.  Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1); TMEP section 1209 et seq.

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. If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informalities:

 

Identification of Goods

 

The identification of goods is unacceptable as indefinite because the wording fails to state clearly what goods are being produced. The current identification actually suggests that the applicant is producing trays that are to be consumed. As a result, the identification of goods is neither specific enough to protect the goods sold by the applicant nor to give other applicants notice of the goods sold by the applicant.  The applicant may adopt the following identification, if accurate: 

 

Refrigerator trays for use in freezing purified water for later consumption, in International Class 11.

 

Ice, namely, purified frozen water sealed in tray for later consumption, in International Class 30

 

Purified water sealed in trays so that it may later be frozen for consumption, in International Class 32.

 

TMEP section 1402.01.

 

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. Section 2.71(b); TMEP section 1402.01.  Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.

 

If the applicant prosecutes this application as a combined, or multiple‑class, application based on use in commerce under Trademark Act Section 1(a), 15 U.S.C. §1051(a), the applicant must comply with each of the following:

 

(1)  The applicant must specifically identify the goods/services in each class and list the goods/services by international class with the classes listed in ascending numerical order.  TMEP §1403.01.

 

(2)  The applicant must submit a filing fee for each international class of goods/services not covered by the fee already paid.  37 C.F.R. §§2.6(a)(1) and 2.86(a); TMEP §§810.01 and 1403.01.  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:

 

(a) $325 per international class if filed electronically using the Trademark Electronic Application System (TEAS); or 

 

(b)   $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.

 

(3)  The applicant must submit: 

 

(a) dates of first use and first use in commerce and one specimen for each class that includes goods or services based on use in commerce under Trademark Act Section 1(a).  The dates of use must be at least as early as the filing date of this application, 37 C.F.R. §§2.34(a)(1) and 2.86(a), and the specimen(s) must have been in use in commerce at least as early as the filing date of the application, and/or

 

(b) a statement of a bona fide intention to use the mark in commerce on or in connection with all the goods or services specified in each class that includes goods or services based on a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), where such statement was not included for the goods or services in the original application.

 

(4)  The applicant must submit an affidavit or a declaration under 37 C.F.R. §2.20 signed by the applicant to verify (3) above.  37 C.F.R. §§2.59(a) and 2.71(c).

 

The submitted specimens of record are not sufficient to show use in any of the Classes.

 

For your convenience, acceptable identifications of goods and services are available on-line at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/search.html.

 

Further Determinations May Be Made After Applicant’s Response

 

The examining attorney will decide on the merits of the application when the applicant responds. 37 C.F.R. Section 2.61(b); TMEP section 1105.02.

 

Specimens Do Not Show Use of Mark with Specified Goods

 

The specimen is unacceptable as evidence of actual trademark use because the applicant has merely submitted a copy of the asserted mark on an otherwise blank background. That is, the specimens fail to show the mark as used on the actual goods, on packaging for the goods, or on screen displays generated by the goods. The submitted specimen is not such that the examining attorney may reasonably assume that consumers will make an association between the mark and the goods for which protection is sought.  The applicant must submit a specimen showing the mark as used in commerce.  37 C.F.R. Section 2.56. Examples of acceptable specimens are tags, labels, instruction manuals, containers or photographs that show the mark on the goods or packaging.  The applicant must verify, with an affidavit or a declaration under 37 C.F.R. Section 2.20, that the substitute specimen was in use in commerce at least as early as the filing date of the application.  Jim Dandy Co. v. Siler City Mills, Inc., 209 USPQ 764 (TTAB 1981); 37 C.F.R. Section 2.59(a); TMEP section 905.10.

 

For Your Information

 

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 enters them.  The applicant must sign the response.  In addition to the identifying information required at the beginning of this letter, the applicant should provide a telephone number to speed up further processing.

 

To avoid lateness due to mail delay, the applicant should add the following certificate to the response to the Office action, retaining a photocopy of the response with the completed certificate in case the response becomes lost.

 

CERTIFICATE OF MAILING

 

I hereby certify that this correspondence is being deposited with the United States Postal Service with sufficient postage as first class mail in an envelope addressed to:  Assistant Commissioner for Trademarks, 2900 Crystal Drive, Arlington, Virginia 22202-3513, on _____________________.

                                                                                                                                    (Date)

 

_______________________________________________________________________

(Signature)

 

_______________________________________________________________________

(Typed or printed name of the person signing the certificate)

 

The certificate-of-mailing procedure does not apply to the filing of trademark applications.

 

Contact and Status Update Information

 

The applicant may view and download any or all documents contained in the electronic file wrapper of all pending trademark applications, as well as many registrations via the Trademark Document Retrieval (TDR) system available online at:

 

<http://portal.gov.uspto.report/external/portal/tow>. 

 

Currently, you can access all pending applications and all Madrid Protocol filings, and also many registrations, via TDR.  The USPTO is in the process of converting all remaining registrations into a digital format, to permit future TDR access.  This conversion process is expected to take several years.

 

Downloads are converted into PDF format and may be viewed with any PDF viewer, including the free Adobe Reader.

 

If you need information regarding the application process or applying for a Trademark, please access other resources on the Trademark Web page such as: Frequently-Asked Questions or Basic Facts about Trademarks.  More detailed information is available in the Trademark Manual of Examining Procedure and the Acceptable Identification of Goods and Services Manual. 

 

Applicants should note that they may now file changes of correspondence address via a new form on TEAS.   Address changes may be performed on up to 20 cases at a time.  The Trademark Office strongly encourages applicants to use this time-saving form that is available online at: http://eteas.gov.uspto.report/V2.0/ca200/WIZARD.htm

 

To submit a fax response to this Office action after that date, send your response to the Law Office fax number, namely (571) 273-9103.

 

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

 

 

/Ronald E. Aikens/

Trademark Attorney, Law Off. 103

(571) 272-9268 (wk)

(571) 273-9268 (fax)(not for Official resp.)

Ron.Aikens@USPTO.gov

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action has been issued via email, you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above and include the serial number, law office number and examining attorney’s name in your response.

 

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.