UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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APPLICATION SERIAL NO. 79103400
MARK: POWER PACK
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: TURBOMECA
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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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.
INTERNATIONAL REGISTRATION NO. 1092969
This is a PROVISIONAL FULL REFUSAL of the trademark and/or service mark in the above-referenced U.S. application. See 15 U.S.C. §1141h(c).
WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL FULL REFUSAL:
Applicant may respond directly to this provisional refusal Office action if applicant is not represented by an authorized attorney. See 37 C.F.R. §2.193(e)(2)(ii). Otherwise, applicant’s authorized attorney must respond on applicant’s behalf. See 37 C.F.R. §2.193(e)(2)(i). However, the only attorneys who are authorized to sign responses and practice before the USPTO in trademark matters are as follows:
(1) Attorneys in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other federal territories and possessions of the United States; and
(2) Canadian agents/attorneys who represent applicants located in Canada and (a) are registered with the USPTO and in good standing as patent agents or (b) have been granted reciprocal recognition by the USPTO.
See 37 C.F.R. §§2.17(e), 2.62(b), 11.1, 11.5(b)(2), 11.14(a), (c); TMEP §§602, 712.03.
Foreign attorneys, other than authorized Canadian attorneys, are not permitted to represent applicants before the USPTO. See 37 C.F.R. §§2.17(e), 11.14(c), (e); TMEP §602.03-.03(b). That is, foreign attorneys may not file written communications, authorize an amendment to an application, or submit legal arguments in response to a requirement or refusal, among other things. See 37 C.F.R. §11.5(b)(2); TMEP §§602.03(c), 608.01. If applicant is represented by such a foreign attorney, applicant must respond directly to this provisional refusal Office action. See 37 C.F.R. §2.193(e)(2)(ii).
DESIGNATION OF DOMESTIC REPRESENTATIVE:
The USPTO encourages applicants who do not reside in the U.S. to designate a domestic representative upon whom notices or process may be served. 15 U.S.C. §§1051(e), 1141h(d); 37 C.F.R. §2.24(a)(1)-(2); see TMEP §610. Such designations may be filed online at http://www.gov.uspto.report/teas/index.html.
THE APPLICATION HAS BEEN PROVISIONALLY REFUSED AS FOLLOWS:
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.
Section 2(e)(1) Refusal – Merely Descriptive
Applicant seeks registration of “POWER PACK” for various goods and services in the area of aircrafts, air vehicles and parts and components thereof.
A “power pack” is relevantly defined as: a device for converting the voltage from a power line or battery to the various voltages required by the components of an electronic circuit.
As the attached Internet excerpts indicate, “power packs” have various applications and use in the aeronautic/aviation industries, especially in connection with hydraulics.
Material obtained from the Internet is generally accepted as competent evidence. See In re Rodale Inc., 80 USPQ2d 1696, 1700 (TTAB 2006) (accepting Internet evidence to show genericness); In re Fitch IBCA Inc., 64 USPQ2d 1058, 1060-61 (TTAB 2002) (accepting Internet evidence to show descriptiveness); TBMP §1208.03; TMEP §710.01(b).
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).
Further, the fact that an applicant may be the first and only user of a merely descriptive designation is not dispositive on the issue of descriptiveness where, as here, the evidence shows that the word or term is merely descriptive. See In re Sun Microsystems, Inc., 59 USPQ2d 1084, 1087 (TTAB 2001); In re Acuson, 225 USPQ 790, 792 (TTAB 1985); TMEP §1209.03(c).
The proposed mark “POWER PACK” is merely descriptive of a feature and/or characteristic of applicant’s goods and services. Accordingly, the mark is refused registration under Trademark Act Section 2(e)(1).
Informalities
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:
Requirement for Information About the Goods and Services
Further, applicant must provide additional information about this wording to enable proper examination of the application. Specifically, applicant must respond to the following questions:
Do any of the applicant’s goods employ or utilize power packs in any form? [e.g., electrical, hydraulic]
Failure to respond to a request for information is an additional ground for refusing registration. See In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701 (TTAB 2003); TMEP §814.
Identification of Goods/Services Requires Amendment
The Class 37 identification of services is acceptable as written. The remaining identifications of goods/services must be amended because certain goods/services are indefinite or overly broad as explained, by International Class, below.
In the identification, the applicant must use the common commercial names for the goods, be as complete and specific as possible and avoid the use of indefinite words and phrases. If the applicant chooses to use indefinite terms, such as “accessories,” “components,” “devices,” “equipment,” “materials,” “parts,” “fittings,” “systems” and “products,” then those words must be followed by the word “namely” and the goods listed by their common commercial names. TMEP §§1402.01 and 1402.03(a).
Further, the applicant must remove any parentheses from the identification of goods and/or services and incorporate the parenthetical information into the description, as shown in the suggestions below. Parenthetical information is only permitted in identifications if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity of the identification, e.g., “obi (Japanese sash).” TMEP §1402.12.
For comparison purposes, the entries requiring amendment have been underlined, and the wording in bold font and/or brackets [ ] indicate information that the applicant must supply. Please be certain to supply all required information when amending the identifications below. Applicant may change this wording to the following, if accurate:
Class 7: Generators for aircraft, namely, gas generators for powering jet engines being a component part of jet engines; compressors as parts of machines, motors and engines; transmission and propulsion couplings and components except those for land vehicles; Propulsion systems using thrust or other mechanical power for aircraft comprising impellers, motors and engines, propellers, nacelles, thrust reversers and the component parts thereof included in this class; auxiliary power units for supplying electrical power for air vehicles; lubrication systems, comprising lubrication machines for motors and engines and impellers of air vehicles; test stands for motors and engines, impellers and other thrusters for aircraft.
Class 9: Electric and electronic apparatus and instruments, namely, generators and/or starters in the nature [specify Class 9 starter, e.g., battery jump starters] for fixed or mobile installations for aircraft; electric, electronic and magnetic sensors for pressure, speed, displacement, temperature, position, vibration; apparatus for recording, transmitting, reproducing, processing sounds, images or data, namely electronic systems and equipment, onboard or not, for the acquisition and processing of parameters and data; electric and electronic control and navigational maintenance equipment and hardware for generators and starters sold together as an integrated set for the generation of thrust and other power.
Class 12: Apparatus for locomotion by air and air vehicles, namely, aircraft, airplanes, helicopters; parts and spare parts for motors and engines for [indicate Class 12 machines, e.g., land vehicles], for propellers and impellers sold as a unit for aerospace vehicles; structural parts of aircraft, namely, nacelles comprised of an inlet cowl, fan cowls, pylon/strut, exhaust nozzle, and exhaust cone; transmission and propulsion couplings and components for [indicate Class 12 machines, e.g., land vehicles].
Class 35: Supplying, namely, purchasing of goods and services for other companies of spare parts for the repair, maintenance and servicing of systems, equipment and parts for aerospace vehicles.
Class 42: Engineering services and engineering consulting; engineering services, namely, structural analysis and appraisal of [indicate goods]; scientific and industrial research relating to the aerospace industry; machine testing; materials testing; flight testing of airplanes and helicopters; testing of the systems, equipment and parts of aerospace vehicles; inspection and quality control of the systems, equipment and parts of aerospace vehicles; engineering services, namely, providing analysis and rendering expert structural appraisals of processed data recorded and acquired during testing of the systems, equipment and parts of aerospace vehicles; research and development of new products relating to the aerospace industry.
TMEP §1402.01.
PLEASE NOTE: The international classification of goods and/or services in applications filed under Trademark Act Section 66(a) cannot be changed from the classification given to the goods and/or services by the International Bureau of the World Intellectual Property Organization in the corresponding international registration. TMEP §§1401.03(d), 1401.04 and 1904.02(b). Therefore, the applicant may only amend an identification to include goods or services, properly within the scope of the present wording, that are properly classified in the current classification. While the identification of goods and services may be amended to clarify or limit the goods or services, adding to the goods or services broadening the scope of the goods or services is not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06.
For assistance with identifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.
/RLF/
Ronald L. Fairbanks
Examining Attorney
Law Office 117
(571) 272-9405
ron.fairbanks@uspto.gov
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. 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. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
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.