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.

 

ISSUE/MAILING DATE: 12/28/2015

 

Introduction

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

Search Results

 

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).

 

Advisory: Summary of Issues to be Addressed

 

·       Refusal: Merely Descriptive – Section 2(e)(1)

·       Requirement: More Information

·       Requirement: Identification of Goods

 

Refusal: Merely Descriptive – Section 2(e)(1)

 

Registration is refused because the applied-for mark merely describes a feature of applicant’s goods.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

 

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods.  TMEP §1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (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) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)). 

 

Generally, if the individual components of a mark retain their descriptive meaning in relation to the goods, the combination results in a composite mark that is itself descriptive and not registrable.  In re Phoseon Tech., Inc., 103 USPQ2d 1822, 1823 (TTAB 2012); TMEP §1209.03(d); see, e.g., In re Cannon Safe, Inc., 116 USPQ2d 1348, 1351 (TTAB 2015) (holding SMART SERIES merely descriptive of metal gun safes, because “each component term retains its merely descriptive significance in relation to the goods, resulting in a mark that is also merely descriptive”); In re King Koil Licensing Co., 79 USPQ2d 1048, 1052 (TTAB 2006) (holding THE BREATHABLE MATTRESS merely descriptive of beds, mattresses, box springs, and pillows where the evidence showed that the term “BREATHABLE” retained its ordinary dictionary meaning when combined with the term “MATTRESS” and the resulting combination was used in the relevant industry in a descriptive sense); In re Associated Theatre Clubs Co., 9 USPQ2d 1660, 1663 (TTAB 1988) (holding GROUP SALES BOX OFFICE merely descriptive of theater ticket sales services, because such wording “is nothing more than a combination of the two common descriptive terms most applicable to applicant’s services which in combination achieve no different status but remain a common descriptive compound expression”). 

 

Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the goods and/or services is the combined mark registrable.  See In re Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968); In re Positec Grp. Ltd., 108 USPQ2d 1161, 1162-63 (TTAB 2013).

 

In this case, both the individual components and the composite result are descriptive of applicant’s goods and do not create a unique, incongruous, or nondescriptive meaning in relation to the goods. 

 

Applicant’s mark is “SMART EQUIPMENT” for “HVAC equipment and controllers as part of HVAC equipment”. 

 

Specifically, the attached evidence from The American Heritage Dictionary shows SMART means, “Capable of making adjustments that resemble those resulting from human decisions, chiefly by means of electronic sensors and computer technology: [e.g.] smart missiles; smart machines”; and  EQUIPMENT means, “Something with which a person, organization, or thing is equipped: [e.g.] The athletes keep their equipment in the locker room.”  Therefore, SMART EQUIPMENT merely describes a feature of applicant’s HVAC equipment and controllers being part of HVAC equipment that uses electronic sensors and computer technology so as to be capable of making adjustments that resemble those resulting from human decisions. 

 

The trademark examining attorney also refers to the attached Internet website excerpts in which SMART EQUIPMENT and/or SMART and/or EQUIPMENT is used in reference to features of HVAC equipment and controllers as part of HVAC equipment.  See attachments. 

 

• http://www.achrnews.com/articles/105272-smart-hvac-hvac-products-becoming-a-whole-lot-smarter
• http://www.link-labs.com/smart-hvac/?__hstc=43953530.23acadeeec4e2ead53cc12159ecc5a49.1451348381166.1451348381166.1451348381166.1&__hssc=43953530.1.1451348381166&__hsfp=3037322902
• http://www.peco.com/Savings/ProgramsandRebates/Business/Pages/PECOSmartEquipmentIncentives.aspx?_ga=1.11637617.475133028.1451348385
• http://www.daikinapplied.com/solutions-intelligent-equipment.php

 

Material obtained from the Internet is generally accepted as competent evidence.  See In re Nieves & Nieves LLC, 113 USPQ2d 1639, 1644-47 (TTAB 2015) (accepting Internet evidence to show false suggestion of a connection and that a name identified a particular living individual whose written consent to register was required); In re Jonathan Drew Inc., 97 USPQ2d 1640, 1641-42 (TTAB 2011) (accepting Internet evidence to show geographic location was well-known for particular goods); In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-03 (TTAB 2009) (accepting Internet evidence to show relatedness of goods in a likelihood of confusion determination); In re Leonhardt, 109 USPQ2d 2091, 2098 (TTAB 2008) (accepting Internet evidence to show descriptiveness); In re Rodale Inc., 80 USPQ2d 1696, 1700 (TTAB 2006) (accepting Internet evidence to show genericness); In re Joint-Stock Co. “Baik”, 80 USPQ2d 1305, 1308-09 (TTAB 2006) (accepting Internet evidence to show geographic significance); In re Gregory, 70 USPQ2d 1792, 1793, 1795 (TTAB 2004) (accepting Internet evidence to show surname significance); TBMP §1208.03; TMEP §710.01(b).

 

The Internet has become integral to daily life in the United States, with Census Bureau data showing approximately three-quarters of American households used the Internet in 2013 to engage in personal communications, to obtain news, information, and entertainment, and to do banking and shopping.  See In re Nieves & Nieves LLC, 113 USPQ2d at 1642 (taking judicial notice of the following two official government publications:  (1) Thom File & Camille Ryan, U.S. Census Bureau, Am. Cmty. Survey Reports ACS-28, Computer & Internet Use in the United States:  2013 (2014), available at http://www.census.gov/content/dam/Census/library/publications/2014/acs/acs-28.pdf, and (2) The Nat’l Telecomms. & Info. Admin. & Econ. & Statistics Admin., Exploring the Digital Nation:  America’s Emerging Online Experience (2013), available at http://www.ntia.doc.gov/files/ntia/publications/exploring_the_digital_nation_-_americas_emerging_online_experience.pdf).  Thus, the widespread use of the Internet in the United States suggests that Internet evidence may be probative of public perception in trademark examination.

 

Therefore, SMART EQUIPMENT describes a feature of applicant’s goods.  Accordingly, the examining attorney refuses registration of the mark as merely descriptive under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1). 

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.

 

Advisory: Supplemental Register

 

Although an amendment to the Supplemental Register would normally be an appropriate response to this refusal, such a response is not appropriate in the present case.  The instant application was filed under Trademark Act Section 1(b) and is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use meeting the requirements of 37 C.F.R. §2.76 has been timely filed.  37 C.F.R. §2.47(d); TMEP §§816.02, 1102.03.

 

If applicant files an acceptable allegation of use and also amends to the Supplemental Register, the effective filing date of the application will be the date on which applicant met the minimum filing requirements of 37 C.F.R. §2.76(c) for the amendment to allege use.  37 C.F.R. §2.75(b); TMEP §§816.02, 1102.03.  In addition, the undersigned trademark examining attorney will conduct a new search of the USPTO records for conflicting marks based on the later application filing date.  TMEP §§206.01, 1102.03.

 

If applicant responds to the refusal, applicant must also respond to the requirements set forth below.

 

Advisory: Disclaimer Needed When Submitting AAU & Amendment to Supplemental Register

 

Applicant is advised that, if an acceptable allegation of use and an amendment to the Supplemental Register are filed, applicant will be required to disclaim “EQUIPMENT” because such wording appears to be generic in the context of applicant’s goods.  See 15 U.S.C. §1056(a); In re Wella Corp., 565 F.2d 143, 144, 196 USPQ 7, 8 (C.C.P.A. 1977); In re Creative Goldsmiths of Wash., Inc., 229 USPQ 766, 768 (TTAB 1986); TMEP §1213.03(b).

 

The following is the standardized format for a disclaimer:

 

No claim is made to the exclusive right to use “EQUIPMENT” apart from the mark as shown.

 

TMEP §1213.08(a)(i).

 

In addition to the refusal above, applicant must also please respond to the following requirements.

 

Requirement for More Information

 

Due to the descriptive nature of the applied-for mark, applicant must provide the following information regarding the goods and wording appearing in the mark: 

 

(1)  Fact sheets, instruction manuals, brochures, advertisements and pertinent screenshots of applicant’s website as it relates to the goods.  Merely stating that information about the goods is available on applicant’s website is insufficient to make the information of record. 

 

If these materials are unavailable, applicant should submit similar documentation for goods and services of the same type, explaining how its own product or services will differ.  If the goods feature new technology and information regarding competing goods is not available, applicant must provide a detailed factual description of the goods.  Factual information about the goods must make clear how they operate, salient features, and prospective customers and channels of trade.  For services, the factual information must make clear what the services are and how they are rendered, salient features, and prospective customers and channels of trade.  Conclusory statements will not satisfy this requirement.; and

 

(2)  Applicant must respond to the following questions: 

 

Will applicant’s HVAC equipment be capable of making adjustments that resemble those resulting from human decisions, chiefly by means of electronic sensors and computer technology?  Please describe and give examples. 

 

Will applicant’s controllers as part of HVAC equipment be capable of making adjustments that resemble those resulting from human decisions, chiefly by means of electronic sensors and computer technology?  Please describe and give examples. 

 

See 37 C.F.R. §2.61(b); In re AOP LLC, 107 USPQ2d 1644, 1650-51 (TTAB 2013); In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004); TMEP §§814, 1402.01(e). 

 

Failure to comply with a request for information can be grounds for refusing registration.  In re AOP LLC, 107 USPQ2d at 1651; In re DTI P’ship LLP, 67 USPQ2d 1699, 1701-02 (TTAB 2003); TMEP §814. 

 

Requirement: Identification of Goods

 

The goods are:  “HVAC equipment and controllers as part of HVAC equipment” in Class 011. 

 

The identification of goods needs clarification because it does not identify the goods with enough specificity and it is too broad because it may identify goods in multiple International Classes.  See TMEP §§1402.01, 1402.03. 

 

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).  If applicant uses indefinite words such as “accessories,” “apparatus,” “components,” “devices,” “equipment,” “materials,” “parts,” “systems,” or “products,” such words must be followed by “namely,” followed by a list of the specific goods identified by their common commercial or generic names.  See TMEP §§1401.05(d), 1402.03(a).

 

Specifically, the wording “controllers as part of HVAC equipment” in the identification of goods is indefinite and needs clarification to specify the goods by common commercial name, e.g. “electrical controllers” or “Electronic controllers for {indicate goods being controlled}”.  TMEP §1402.01.  Please note that “Electrical controller” is not to be used interchangeably with “electronic controllers.” An “electric” or “electrical” controller is used in the control of electricity. An “electronic controller” is an electronic device that is used to control the movement or position of a piece of equipment. As a result, it is necessary to specify for the “electronic controller” what is being controlled.

 

If accurate, applicant may adopt the following formulation for drafting an acceptable identification.  The suggested language has been bolded for applicant’s convenience. 

 

Class 006:       HVAC equipment, namely, [please specify in International Class 006 by common commercial name, e.g. “Metal cages for HVAC units”]

 

Class 009:       HVAC equipment, namely, [please specify in International Class 009 by common commercial name, e.g. electronic monitors to collect operational data and settings, including temperature data and settings, from HVAC equipment to ensure proper functioning]; electrical controllers as part of HVAC equipment; electronic controllers for HVAC equipment

 

Class 011:       HVAC equipment, namely, HVAC units

 

See TMEP §1402.01. 

 

Advisories

 

An applicant may only amend an identification to clarify or limit the goods and/or services, but not to add to or broaden the scope of the goods and/or services.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.

 

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 at http://tess2.gov.uspto.report/netahtml/tidm.html.  See TMEP §1402.04.

 

The examining attorney has attached excerpts from the ID Manual to aid the applicant.  Please see attached.  

 

Multiclass Advisories

 

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(1)       List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)       Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp).  The application identifies goods that are classified in at least three classes; however, applicant submitted fees sufficient for only one class.  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/multiclass.jsp.

 

Response Guidelines

 

TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application.  See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820.  TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $50 per international class of goods and/or services.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.  However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone without incurring this additional fee. 

 

/Gilbert M. Swift/

Trademark Examining Attorney

Law Office 109

Tel. 1+(571) 272-9028

Gilbert.Swift@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 12/28/2015 FOR U.S. APPLICATION SERIAL NO. 86787728

 

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 12/28/2015 (or sooner if specified in the Office action).  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 Trademark Electronic Application System (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.