UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

 

 

 

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.  A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.

 

 

ISSUE/MAILING DATE: 10/30/2017

 

 

INTERNATIONAL REGISTRATION NO. 1337963

 

This letter is in response to the communication received on October 13, 2017.  Applicant’s attorney responded and argued against the refusal to register and indicated that the evidence referenced in the first office action was not attached.  The Examining Attorney apologizes for omitting this evidence.  It is now submitted with this subsequent office action.  The requirement for an acceptable description of goods is satisfied. The requirement for application to indicate if the mark has any meaning in the trade or industry is satisfied. 

 

The refusal to register is continued. 

 

 

FAILURE TO FUNCTION AS A MARK – MODEL DESIGNATION – REFUSAL CONTINUED

 

Registration is refused because the applied-for mark, as used on the applicant’s online user’s manual, merely identifies a model designation; it does not also function as a trademark to identify and distinguish applicant’s goods from those of others and to indicate the source of applicant’s goods.  Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051-1052, 1127; see In re Dana Corp., 12 USPQ2d 1748 (TTAB 1989) (holding that the applied-for marks, comprised of various alphanumeric designations such as 5-469X and 5-438X, served merely as model designations for vehicle parts); TMEP §§904.07(b), 1202.16(a), (c)(ii), (c)(v)(A). 

 

Specifically, the attached excerpt from applicant’s online user manual indicates that it is using the mark as a model number. Note the following from applicant’s online user manual.

 

RFID Interface Module

 

Model

ECLEF-V680D2

User’s Manual

 

INTRODUCTION

 

Thank you for purchasing the RFID interface module manufactured by Mitsubishi Electric Engineering Company, Ltd.

 

Prior to use, please read this manual carefully to develop full familiarity with the functions and performance of the programmable controller to ensure correct use.

 

Detailed manuals

Included manual

Manual Title Manual Number

ECLEF-V680D2 RFID Interface Module User's Manual (Hardware) 50CM-D180189

 

 

In addition, third parties refer to the matter presented for registration as a model number.  Note the attached evidence.

 

1. The EU Automation website states that ECLEF-V680D2 is a model number.

 

MITSUBISHI ECLEF-V680D2

 

We're here to help. Our multi-lingual team search high and low to always find the solution you need to get your machine back up and running as quickly as possible. Receive a quote now by filling in the form below.

 

ECLEF-V680D2

MITSUBISHI

 

SPECIFICATION

EUA Stock No            554832

Brand/Manufacturer   Mitsubishi

Manufacturer Part Number    ECLEF-V680D2

Alternate Part Number           ECLEFV680D2

 

 

 

2. The CC-Link Partner Association website states that ECLEF-V680D2 is a model number.

 

CC-Link IE Field Network compatible ECLEF-V680D2 RFID Interface Unit

 

As the RFID interface module for the CC-LinkIE Field intelligent device station, ECLED-V680D2 is available.

 

Features

 

•As the RFID interface module for the CC-Link IE Field intelligent device station, ECLEF-V680D2 is available.

 

Ther[sic] distance from the CC-Link IE Field master station to the RFID interface module can be extended up to 12,000m.

 

•Ther[sic] 2-channel module, ECLEF-V680D2, is connectable to two antennas with separate amplifier or one antenna with a built-in amplifier.                                                                                     

 

 

Although applicant argues that the Examining Attorney has no specimens of use on which to base this refusal, TMEP Section 1202.16(c)(i)(A) provides that the Examining Attorney can use any relevant evidence to support the refusal.  Moreover, TMEP Section 1202.16(c)(v)(A) states that Section 66(a) applications may be refused registration for failure to function as a mark where the record clearly and unequivocally indicates that the entire mark identifies a model designation.  See In re Right-On Co., 87 USPQ2d 1152, 1156-57 (TTAB 2008) (affirming an ornamentation refusal in a §66(a) application despite the lack of a specimen since the mark was decorative or ornamental on its face as depicted on the drawing page and described in the application).

 

Applicant’s website and third party websites clearly show that the mark is being used as a model designation and the refusal to register is maintained.  

 

If applicant believes applicant’s mark has acquired distinctiveness in the United States, that is, it has become a distinctive source indicator for the applied-for goods and/or services, applicant may amend the application to assert a claim of acquired distinctiveness under Trademark Act Section 2(f).  See 15 U.S.C. §1052(f).  The USPTO decides each case on its own merits.  See TMEP §1212.06.

 

Evidence of acquired distinctiveness may include affidavits or declarations of long-term use in commerce; specific dollar sales under the mark; advertising expenditures; samples of typical advertising; and letters, affidavits, or declarations in which consumers and/or dealers assert recognition of the mark as an indicator of source.  See 37 C.F.R. §2.41(a)(3); In re Ideal Indus., Inc., 508 F.2d 1336, 1339-40, 184 USPQ 487, 489-90 (C.C.P.A. 1975); In re Capital Formation Counselors, Inc., 219 USPQ 916, 919 (TTAB 1983); TMEP §§1212.06 et seq.

 

The following factors are generally considered when determining whether a proposed mark has acquired distinctiveness:  length and exclusivity of use of the mark in the United States by applicant; the type, expense, and amount of advertising of the mark in the United States; applicant’s sales success in the United States; unsolicited media coverage; and consumer studies (linking the name to the source).  See In re Koninklijke Philips Elecs. N.V., 112 USPQ2d 1177, 1180 (TTAB 2014) (citing In re Steelbuilding.com, 415 F.3d 1293, 1300, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005)).  A showing of acquired distinctiveness need not consider all of these factors, and no single factor is determinative.  In re Steelbuilding.com, 415 F.3d at 1300, 75 USPQ2d at 1424; see TMEP §§1212.06 et seq.  However, for marks comprised of model designations, long-term use in commerce alone is not sufficient to show acquired distinctiveness where there is no showing that the designation has been perceived as a trademark.  See In re Petersen Mfg. Co., 229 USPQ 466, 468 (TTAB 1986).

 

To establish acquired distinctiveness, an applicant may rely only on use in commerce that may be regulated by the U.S. Congress.  See 15 U.S.C. §§1052(f), 1127.  Use solely in a foreign country or between two foreign countries is not evidence of acquired distinctiveness in the United States.  TMEP §§1010, 1212.08; see In re Rogers, 53 USPQ2d 1741, 1746-47 (TTAB 1999).

 

  

RESPONSE

 

Applicant should include the following information on all correspondence with the Office:  (1) the name and law office number of the trademark examining attorney, (2) the serial number and filing date of the application, (3) the date of issuance of this Office action, (4) applicant’s name, address, telephone number and e-mail address (if applicable), and (5) the mark.  37 C.F.R. §2.194(b)(1); TMEP §302.03(a).

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

 

 

WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL FULL REFUSAL:  Any response to this provisional refusal must be personally signed by an individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner).  37 C.F.R. §§2.62(b), 2.193(e)(2)(ii); TMEP §712.01.  If applicant hires a qualified U.S. attorney to respond on his or her behalf, then the attorney must sign the response.  37 C.F.R. §§2.193(e)(2)(i), 11.18(a); TMEP §§611.03(b), 712.01.  Qualified U.S. attorneys include those in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other U.S. commonwealths or U.S. territories.  See 37 C.F.R. §§2.17(a), 2.62(b), 11.1, 11.14(a); TMEP §§602, 712.01.  Additionally, for all responses, the proper signatory must personally sign the document or personally enter his or her electronic signature on the electronic filing.  See 37 C.F.R. §2.193(a); TMEP §§611.01(b), 611.02.  The name of the signatory must also be printed or typed immediately below or adjacent to the signature, or identified elsewhere in the filing.  37 C.F.R. §2.193(d); TMEP §611.01(b).

 

In general, foreign attorneys are not permitted to represent applicants before the USPTO (e.g., file written communications, authorize an amendment to an application, or submit legal arguments in response to a requirement or refusal).  See 37 C.F.R. §11.14(c), (e); TMEP §§602.03-.03(b), 608.01. 

 

 

DESIGNATION OF DOMESTIC REPRESENTATIVE:  The USPTO encourages applicants who do not reside in the United States to designate a domestic representative upon whom any notice or process may be served.  TMEP §610; see 15 U.S.C. §§1051(e), 1141h(d); 37 C.F.R. §2.24(a)(1)-(2).  Such designations may be filed online at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp. 

 

 

 

 

/Margery A. Tierney/

Trademark Examining Attorney

Law Office 111

571-272-9234

margery.tierney@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 the Trademark Electronic Application System (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 the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or 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/trademarks/teas/correspondence.jsp.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 10/30/2017 FOR U.S. APPLICATION SERIAL NO. 79204619

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 10/30/2017 (or sooner if specified in the Office action).  A response transmitted through the Trademark Electronic Application System (TEAS) must be received before midnight Eastern Time of the last day of the response period.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.