To: | BSH Home Appliances Corporation (NBN-IntelProp@bshg.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 85716738 - APP-LIANCE BAR - 2012W02803US |
Sent: | 1/25/2013 7:03:45 PM |
Sent As: | ECOM102@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 85716738
MARK: APP-LIANCE BAR
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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: BSH Home Appliances Corporation
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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.
ISSUE/MAILING DATE: 1/25/2013
This Office action is in response to applicant’s communication filed on January 4, 2013. Applicant’s amended identifications of services in International Classes 35, 37 and 42 are accepted. Upon further consideration the following disclaimer is required.\
Disclaimer Required
Applicant must disclaim the descriptive wording “APPLIANCE” apart from the mark as shown because it merely describes an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s services as specified in the application, namely in relation to “home appliances” in International Classes, 35, 37 and 42. See 15 U.S.C. §§1052(e)(1), 1056(a); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005); TMEP §§1213, 1213.03(a).
A novel spelling or an intentional misspelling that is the phonetic equivalent of a merely descriptive word or term is also merely descriptive if purchasers would perceive the different spelling as the equivalent of the descriptive word or term. See In re Hercules Fasteners, Inc., 203 F.2d 753, 97 USPQ 355 (C.C.P.A. 1953) (holding “FASTIE,” phonetic spelling of “fast tie,” merely descriptive of tube sealing machines); Andrew J. McPartland, Inc. v. Montgomery Ward & Co., 164 F.2d 603, 76 USPQ 97 (C.C.P.A. 1947) (holding “KWIXTART,” phonetic spelling of “quick start,” merely descriptive of electric storage batteries); In re Carlson, 91 USPQ2d 1198 (TTAB 2009) (holding “URBANHOUZING” phonetic spelling of “urban” and “housing,” merely descriptive of real estate services); In re State Chem. Mfg. Co., 225 USPQ 687 (TTAB 1985) (holding “FOM,” phonetic spelling of “foam,” merely descriptive of foam rug shampoo); TMEP §1209.03(j). Here, applicant uses the wording “APP-liance” in the applied-for-mark for its services offered in the area or field of home appliances. Therefore, the wording “APP-liance” is merely descriptive in relation to the services as specified in the application in International Classes 35, 37 and 42.
If a mark comprises a word or words that are misspelled but nonetheless must be disclaimed, the disclaimer of the word or words must be in the correct spelling. In re Newport Fastener Co. , 5 USPQ2d 1064, 1067 n.4 (TTAB 1987). Therefore, applicant must disclaim the wording “appliance” in the correct spelling.
Applicant may submit the following standardized format for a disclaimer:
No claim is made to the exclusive right to use “APPLIANCE” apart from the mark as shown.
TMEP §1213.08(a)(i); see In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).
A “disclaimer” is a statement in the application record that applicant does not claim exclusive rights to an unregistrable component of a mark; a disclaimer does not affect the appearance of the mark or physically remove disclaimed matter from the mark. TMEP §§1213, 1213.10. An unregistrable component of a mark includes wording and designs that are merely descriptive of an applicant’s goods and/or services. 15 U.S.C. §1052(e); see TMEP §§1209.03(f), 1213.03 et seq. Such words or designs need to be freely available for other businesses to market comparable goods or services and should not become the proprietary domain of any one party. See Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 1560, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991); In re Aug. Storck KG, 218 USPQ 823, 825 (TTAB 1983).
/DominicJFerraiuolo/
Attorney U.S. Patent & Trademark Office
Law Office 102
tel: 571-272-9156
fax: 571-273-9102
email: dominic.ferraiuolo@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.