UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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U.S. APPLICATION SERIAL NO. 79217022
MARK: GROHE
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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: Grohe AG
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
INTERNATIONAL REGISTRATION NO. 1366277
STRICT DEADLINE TO RESPOND TO THIS NOTIFICATION: TO AVOID ABANDONMENT OF THE REQUEST FOR EXTENSION OF PROTECTION OF THE INTERNATIONAL REGISTRATION, THE USPTO MUST RECEIVE A COMPLETE RESPONSE TO THIS PROVISIONAL FULL REFUSAL NOTIFICATION WITHIN 6 MONTHS OF THE “DATE ON WHICH THE NOTIFICATION WAS SENT TO WIPO (MAILING DATE)” LOCATED ON THE WIPO COVER LETTER ACCOMPANYING THIS NOTIFICATION.
In addition to the Mailing Date appearing on the WIPO cover letter, a holder (hereafter “applicant”) may confirm this Mailing Date using the USPTO’s Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. To do so, enter the U.S. application serial number for this application and then select “Documents.” The Mailing Date used to calculate the response deadline for this provisional full refusal is the “Create/Mail Date” of the “IB-1rst Refusal Note.”
This is a PROVISIONAL FULL REFUSAL of the request for extension of protection of the mark in the above-referenced U.S. application. See 15 U.S.C. §1141h(c). See below in this notification (hereafter “Office action”) for details regarding the provisional full refusal.
Search of USPTO Records
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
IDENTIFICATION OF GOODS AND SERVICES
The wording in the identification of goods and services is indefinite and must be clarified. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. For example, in the identification of goods, applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases. TMEP §1402.03(a); see 37 C.F.R. §2.32(a)(6). If applicant uses indefinite words such as “accessories,” “apparatus,” “components,” “devices,” “equipment,” “materials,” “parts,” “systems,” or “products,” such wording must be followed by “namely,” and a list of each specific product identified by its common commercial or generic name. See TMEP §§1401.05(d), 1402.03(a).
In addition, the identification for software in International Class 9 is indefinite; applicant must specify the purpose or function of the software. See 37 C.F.R. §2.32(a)(6); TMEP §1402.03(d). If the software is content- or field-specific, applicant must also specify its content or field of use. See TMEP §1402.03(d). The USPTO requires such specificity in identifying computer software in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks. See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).
The international classification of goods in applications filed under Trademark Act Section 66(a) cannot be changed from the classification the International Bureau assigned to the goods in the corresponding international registration. 37 C.F.R. §2.85(d); TMEP §1401.03(d). Therefore, although software may be classified in international classes other than International Class 9 (i.e., International Classes 41 and 42), any modification to the identification must identify goods in International Class 9 only, the class specified in the application for such goods. See TMEP §1904.02(c)(ii).
The following are examples of acceptable identifications for software in International Class 9: “downloadable mobile applications for managing bank accounts,” “desktop publishing software,” “tax preparation software.”
In an application filed under Trademark Act Section 66(a), an applicant may not change the classification of goods and services from that assigned by the International Bureau of the World Intellectual Property Organization (International Bureau) in the corresponding international registration. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b). Therefore, any modification to this wording must identify goods and services in International Classes 009, 011, and 042, the classification assigned by the International Bureau for these goods and services.
Applicant should note that any wording in bold, in italics, underlined and/or in ALL CAPS below offers guidance and/or shows the
changes being proposed for the identification of goods and/or services. If there is wording in the applicant’s version of the identification of goods and/or services which should be removed, it will
be shown with a line through it such as this: strikethrough. When making its amendments, applicant should enter them in standard font, not in bold, in italics, underlined and/or in ALL CAPS.
Applicant may adopt the following wording, if accurate:
International Class 009: Electrotechnical, electronic, optoelectronic and acoustic equipment, apparatus and installations composed thereof for monitoring, controlling and
regulating water supply and drainage, treatment, availability, distribution, removal and heating of drinking and commercial water, NAMELY, ______{specify type of
equipment, apparatus and installations in International Class 009 only, e.g., water filter controllers, water level indicators}; equipment and apparatus for monitoring, measuring, controlling
and regulating pressure, temperature and flow rate quantities of water in water conduit installations, containers and sanitary installations, NAMELY, ______{specify
type of equipment and apparatus in International Class 009 only, e.g., water level indicators, water meters}; thermostats, thermostat components IN THE NATURE OF
THERMOSTATS and THERMOSTAT assemblies for cold water/hot water mixer valves, fittings and taps, AND STRUCTURAL COMPONENT parts and accessories for the
aforesaid goods INCLUDED IN THIS CLASS (included in this class); DOWNLOADABLE mobile APPLICATION apps for operating
toilets, water taps, LIGHTING lightning and PUBLIC ADDRESS (PA) systems; electronic devices IN THE NATURE OF
_____{specify type of electronic devices in International Class 009 only, e.g., touchscreen monitors, laptops, cell phones} for monitoring and transmitting health data;
DOWNLOADABLE mobile APPLICATION apps for health monitoring, AND MONITORING moisture sensors, flood sensors, sensors for leak
monitoring and water control; DOWNLOADABLE cloud-BASED network monitoring software; computers; computer hardware; software programs FOR
_______{specify the function of the programs, e.g., use in database management, use as a spreadsheet, word processing, etc. and, if software is content- or field-specific, the
content or field of use}; COMPUTER firmware FOR ______{specify the function of the program, e.g., use in database management, use as a
spreadsheet, word processing, etc. and, if firmware is content- or field-specific, the content or field of use}; semiconductors; video devices, NAMELY, ______{specify type of video devices in International Class 009 only, e.g., video servers, video disk players, video phones}; video circuit boards; video systems products,
NAMELY, ______{specify type of products in International Class 009 only, e.g., video circuit boards, video tape recorders, video cameras}; apparatus and equipment for
recording, reproduction or modification of sound, images and data; APPARATUS AND EQUIPMENT FOR MODIFICATION OF SOUND, IMAGES AND DATA, NAMELY, COMPUTER SOFTWARE FOR MODIFYING
OF SOUND, IMAGES AND DATA; sound, images and data in recorded form, NAMELY, APPARATUS FOR RECORDING SOUND, IMAGES AND DATA; data recorded in electronic, optical or magnetic
form, NAMELY, PRERECORDED ELECTRONIC MEDIA DEVICES, OPTICAL DISCS, AND MAGNETIC DATA CARRIERS ALL FEATURING ______{indicate subject matter, e.g., water
conservation, plumbing}; microprocessors; integrated circuits; microcomputer apparatus, NAMELY, MICROCOMPUTERS; computer programs FOR _______{specify the function of the programs, e.g., use in database management, use as a spreadsheet, word processing, etc. and, if software is content- or field-specific, the content or
field of use}; DOWNLOADABLE EDUCATIONAL COURSE teaching material IN THE FIELD OF relating to computers and ______{specify type of data} data, recorded magnetically, optically or electronically; apparatus and instruments for recording, processing, receiving, reproducing, transmitting, modifying,
compressing, decompressing, radio transmission, merging or editing of data, NAMELY, ______{specify common commercial name for apparatus and instruments in
International Class 009 only, e.g., sound recording apparatus and instruments, data compression software, editing machines for movie films}; electronically recorded data in the nature of
COMPUTER SOFTWARE FOR DEVELOPING algorithms for the compression and decompression of data; testing and calibrating apparatus, NAMELY, _______{specify type of apparatus in International Class 009 only, e.g., industrial calibration sensors, computer calibrating equipment, semiconductor testing apparatus}; apparatus and
instruments for telecommunication, NAMELY, _____{specify type of apparatus and instruments in International Class 009 only, e.g., telecommunication cables,
telecommunications transmitters, telecommunication base stations}; apparatus and instruments used for conferences, document exchange and editing, NAMELY, video cameras;
headphones; COMPUTER mice; STRUCTURAL component parts for all the aforesaid goods
International Class 011: Apparatus for lighting, heating, refrigerating, drying, ventilating, water supply and sanitary purposes, including for the kitchen, NAMELY, ______{specify type of apparatus in International Class 011 only, e.g., lighting installations, heating installations, refrigerators}; DOWNLIGHTERS downlights; flange CEILING light fittings; sanitary fittings, fixtures and fittings for water supply, water heating, bath, shower, washing,
dish-washing, bidet and toilet installations and for the water intake and drainage of such installations, the aforesaid fixtures and fittings, including digital and touch-controlled,
NAMELY, _____{specify type of fittings and fixtures in International Class 011 only, e.g., drains, tub control valves, shower sprayers}; hot AND cold
water mixer fittings, NAMELY, _____{specify type of fittings in International Class 011 only, e.g., mixer faucets for water pipes, mixer taps for water
pipes}; water run-off and overflow fittings, NAMELY, ______{specify type of fittings in International Class 009 only, e.g., tub overflows}; taps
for washstands, tubs, showers and bidets; showers, hand showers and overhead showers, shower fittings IN THE NATURE OF ______{specify type of shower fittings in
International Class 011 only, e.g., control esutcheons, shower control valves, drains}, massage showers, showers {delete duplicate}, spray
nozzles and spray SHOWER heads for the aforesaid goods; holders IN THE NATURE OF _____{specify type of holders in International Class 011
only, e.g., shower enclosures}, tubes BEING FLEXIBLE PIPES BEING PARTS OF SHOWER PLUMBING INSTALLATIONS and tube connections IN THE NATURE OF
_____{specify type of tube connections in International Class 011 only, e.g., shower control valves} for the aforesaid showers; shower columns IN THE
NATURE OF ____{specify common commercial name for shower columns in International Class 011 only, e.g., shower enclosures}, complete shower and BATH
wash cubicles, shower trays, shower basins, shower cubicles, shower systems COMPRISED PRIMARILY OF ______{specify type of shower systems in International Class 011
only, e.g., shower heads, shower stands, shower doors}, shower apparatus IN THE NATURE OF ______{specify type of shower apparatus in International Class 011
only, e.g., shower rods, shower doors, shower panels}, shower AND bath installations IN THE NATURE OF ______{specify type of shower installations in International Class 011 only, e.g., shower enclosures, shower heads, shower doors}, shower apparatus {delete duplicate}, shower and bath cubicles, electronically controlled self-closing shower-taps; including the aforesaid water supply and sanitary fittings being thermostat
AND and/or non-contact controlled fittings, NAMELY, _____{specify type of fittings in International Class 011 only, e.g.,
faucets}; taps for sink units; water SHOWER mixers BEING PLUMBING FIXTURES; SANITARY PLUMBING FITTINGS, NAMELY, SHOWER mixing
valves, regulating valves, shut-off valves, AND water inlets and outlets IN THE NATURE OF WATER FAUCETS (sanitary fittings); water softening apparatus
and installations; sanitary furnishings, namely wash-hand basins BEING PARTS OF SANITARY INSTALLATIONS, sinks, bath tubs, bath tubs for sitz baths; parts and accessories for all
the aforesaid goods, NAMELY, ______{specify types of parts and accessories in International Class 011 only, e.g., shower heads}
International Class 042: Cloud computing FEATURING SOFTWARE FOR USE _______ {specify the function of the programs,
e.g., for use in database management, for use as a spreadsheet, for word processing, etc. and, if software is content- or field-specific, the field of use}; programming of COMPUTER operational software FOR OTHERS for access to and use of cloud computing networks; water analysis; tap water quality analysis; analysis of technical data
collected, NAMELY, ANALYSIS OF A DATA COLLECTION SERVICE USING PROPRIETARY SOFTWARE TO EVALUATE, ANALYZE AND COLLECT SERVICE DATA; bacteriological LABORATORY analysis; hosting of a technological platform on the internet PLATFORM AS A SERVICE (PAAS) FEATURING COMPUTER SOFTWARE PLATFORMS for consumption
analysis and leak testing; providing of aN ON-LINE, NON-DOWNLOADABLE INTERNET-BASED mobile SOFTWARE APPLICATION app for operating
sanitary installations, lighting devices and public address systems
On-line Acceptable Identification of Goods and Services Manual Information: For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
Description of the Mark
Generic color names must be used to describe the colors in the mark, e.g., magenta, yellow, turquoise. TMEP §807.07(a)(i)-(ii). If black, white, and/or gray are not being claimed as a color feature of the mark, applicant must exclude them from the color claim and include in the mark description a statement that the colors black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark. See TMEP §807.07(d).
Therefore, applicant must provide a mark description that specifies where all the colors appear in the literal and design elements in the mark. See TMEP §807.07(a)(ii). The following is suggested, if accurate:
The mark consists of the stylized wording GROHE below a circular design, both in the color white on a blue square with curved edges.
Applicant must specify its form of business or type of legal entity and its national citizenship or foreign country of organization or incorporation. See 37 C.F.R. §§2.32(a)(3)(i)-(ii), 7.25(a)-(b); TMEP §§803.03, 803.04, 1904.02(a). This information is required in all U.S. trademark applications, including those filed under Trademark Act Section 66(a) (also known as “requests for extension of protection of international registrations to the United States”). See 37 C.F.R. §§2.32(a)(3)(i)-(ii), 7.25(a)-(b); TMEP §§803.03, 803.04, 1904.02(a).
Acceptable entity types include an individual, a partnership, a corporation, a joint venture, or the foreign equivalent. See 37 C.F.R. §2.32(a)(3)(i)-(ii); TMEP §§803.03 et seq.
If applicant’s entity type is an individual, applicant must indicate his or her national citizenship for the record. See 37 C.F.R. §2.32(a)(3)(i); TMEP §803.04. If applicant’s entity type is a corporation, association, partnership, joint venture, or the foreign equivalent, applicant must set forth the foreign country under whose laws applicant is organized or incorporated. 37 C.F.R. §2.32(a)(3)(ii); TMEP §§803.03(b)-(c), 803.04. For an association, applicant must also specify whether the association is incorporated or unincorporated, unless the foreign country and the designation or description “association/associazione” appear in Appendix D of the Trademark Manual of Examining Procedure (TMEP). TMEP §803.03(c).
If applicant is organized under the laws of a foreign province or geographical region, applicant should specify both the foreign province or geographical region and the foreign country in which the province or region is located. See TMEP §803.04. To provide this information online via the Trademark Electronic Application System (TEAS) response form, applicant must (1) locate the “Entity Type” heading and select “Other;” (2) locate the “Specify Entity Type” heading and select “Other” under the Foreign Entity option, and enter in the free-text field below both applicant’s entity type and the foreign province or geographical region of its organization (e.g., partnership of Victoria); and (3) locate the “State or Country Where Legally Organized” heading and select the appropriate foreign country (e.g., Australia) under the Non-U.S. Entity option. See id.
Response
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.
/David A. Hoffman/
Examining Attorney
Law Office 107
(Ph) 571-272-8805
(Fx) 571-273-8805
Email: david.hoffman@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.