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. 86787728
MARK: SMART EQUIPMENT
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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: Johnson Controls Technology Company
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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FINAL 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: 8/3/2016
THIS IS A FINAL ACTION.
This letter responds to applicant’s communication filed on June 28, 2016, (the “Response”) in which applicant:
No. (1) is acceptable.
Nos. (2), (3) and (4) are not acceptable.
Summary of Issues Applicant Must Address
Final Refusal: Merely Descriptive – Section 2(e)(1)
As stated in the prior Office action, 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.
Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the goods 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 evidence from The American Heritage Dictionary attached to the prior Office action 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 Internet website excerpts attached to the prior Office action 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 to prior Office action.
The examining attorney also refers to the following additional articles in the field of HVAC smart equipment to illustrate further:
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.
In addition, the examining attorney attaches a representative sampling of third-party registrations featuring goods the same as or similar to applicant’s, which serves as probative evidence on the issue of descriptiveness where “SMART”, “EQUIPMENT” and/or “SMART EQUIPMENT” is disclaimed, registered under Trademark Act Section 2(f) based on acquired distinctiveness, or registered on the Supplemental Register. See Inst. Nat’l des Appellations D’Origine v. Vintners Int’l Co., 958 F.2d 1574, 1581-82, 22 USPQ2d 1190, 1196 (Fed. Cir. 1992); In re Box Solutions Corp., 79 USPQ2d 1953, 1955 (TTAB 2006); In re Finisar Corp., 78 USPQ2d 1618, 1621 (TTAB 2006).
Applicant’s Response
First, applicant asserts that applicant’s mark is suggestive and not descriptive.
Here, there is no step, however infinitesimal, between SMART EQUIPMENT and applicant’s HVAC equipment. The determination of whether a mark is merely descriptive is made in relation to an applicant’s goods, not in the abstract. DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012); In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); TMEP §1209.01(b); see, e.g., In re Polo Int’l Inc., 51 USPQ2d 1061, 1062-63 (TTAB 1999) (finding DOC in DOC-CONTROL would refer to the “documents” managed by applicant’s software rather than the term “doctor” shown in a dictionary definition); In re Digital Research Inc., 4 USPQ2d 1242, 1243-44 (TTAB 1987) (finding CONCURRENT PC-DOS and CONCURRENT DOS merely descriptive of “computer programs recorded on disk” where the relevant trade used the denomination “concurrent” as a descriptor of a particular type of operating system).
“Whether consumers could guess what the product is from consideration of the mark alone is not the test.” In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
As one of the most innovative companies in its field, no purchaser would be confused as to the meaning of SMART EQUIPMENT in the context of applicant’s HVAC equipment. According to applicant’s website, “Johnson Controls is a global technology and industrial leader serving customers in more than 150 countries. Since [applicant’s] invention of the first electric room thermostat in 1885, [applicant has] been committed to delivering innovative products that help the world run smoothly, smartly, simply and safely.” See http://www.johnsoncontrols.com/about-us/our-company (emphasis added).
Thus, applicant’s argument fails.
Second, applicant states that the “Examining Attorney bases his refusal solely on the dictionary definitions for the individual terms, “SMART” and “EQUIPMENT.”
It appears that applicant’s counsel has failed to read or has otherwise glossed over the Internet evidence provided in the prior Office action. Thus, the examining attorney directs applicant to the evidence attached to the prior Office action as well as to the present final Office action.
Therefore, applicant’s assertion fails.
Third, applicant argues that the mark “SMART EQUIPMENT” is suggestive as opposed to descriptive, because the mark must be viewed as a whole. The examining attorney directs applicant’s to the above argument that, 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).
Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the goods 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 HVAC goods and do not create a unique, incongruous, or nondescriptive meaning in relation to the goods.
To illustrate, the examining attorney directs applicant’s attention to the following relevant cases: In re Tower Tech, Inc., 64 USPQ2d 1314, 1317-18 (TTAB 2002) (holding SMARTTOWER merely descriptive of “commercial and industrial cooling towers and accessories therefor, sold as a unit”); In re Sun Microsystems, Inc., 59 USPQ2d 1084, 1087 (TTAB 2001) (holding AGENTBEANS merely descriptive of “computer software for use in the development and deployment of application programs on a global computer network”); In re Putnam Publ’g Co., 39 USPQ2d 2021, 2022 (TTAB 1996) (holding FOOD & BEVERAGE ON-LINE merely descriptive of “a news and information service updated daily for the food processing industry, contained in a database”); In re Copytele, Inc., 31 USPQ2d 1540, 1542 (TTAB 1994) (holding SCREEN FAX PHONE merely descriptive of “facsimile terminals employing electrophoretic displays”); In re Phoseon Tech., Inc., 103 USPQ2d 1822, 1823 (TTAB 2012) (holding SEMICONDUCTOR LIGHT MATRIX merely descriptive of light and UV curing systems composed primarily of light-emitting diodes (LEDs) for industrial and commercial applications); In re Copytele, Inc., 31 USPQ2d 1540, 1541-42 (TTAB 1994) (holding SCREEN FAX PHONE merely descriptive of facsimile terminals employing electrophoretic displays).
Thus, applicant’s argument fails.
Therefore, SMART EQUIPMENT describes a feature of applicant’s goods. Accordingly, the registration refusal of the mark as merely descriptive under Trademark Act Section 2(e)(1) is hereby made Final. 15 U.S.C. §1052(e)(1).
Final Requirement for More Information
As stated in the prior Office action, 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.
Firstly, the examining attorney has carefully reviewed applicant’s evidence for similar HVAC equipment and controls made by applicant. He notes that applicant’s narrative does not provide factual information about the goods, making clear how the goods will operate, salient features, and prospective customers and channels of trade.
Second, applicant has not responded to any of the direct questions in the second section of the requirement. This omission is significant, because these basic questions speak directly to the descriptiveness of the mark.
Specifically, applicant’s narrative in its Response is as follows, in toto: “Applicant notes that the Examining Attorney has required the submission of informational matter pertaining to Applicant’s goods. Applicant has not yet commenced use of this SMART EQUIPMENT trademark and therefore cannot provide any material specific to Applicant’s goods under the SMART EQUIPMENT mark. In lieu of this material, Applicant has attached material for similar HVAC equipment and controls made by Applicant.” (emphasis added) Thus, applicant responds to the materials requirement without ever addressing the direct questions.
Accordingly, this requirement is made Final.
Final Requirement: Identification of Goods
THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE GOODS SPECIFIED THEREIN
The identification of goods in the application is: “HVAC equipment and controllers as part of HVAC equipment” in Class 011.
The amended identification of goods is: “electric and electronic controls for HVAC equipment, namely, heating, ventilating, air conditioning, refrigeration, energy, lighting, fire alarm, and security access systems, and component and replacement parts thereof, automatic pressure control machines and instruments that react to temperature and pressure for heating and air conditioning, apparatus to measure and control, namely, electric, electronic, electromechanical, and pneumatic controllers, sensors for controllers, thermostats, humidistats; valve activators, actuators, automatic valves and dampers, computer software and operating system software for onsite, remote and internet-based operations used to operate building automation control systems, namely, heating, ventilation, air conditioning, refrigeration, for industrial, commercial and governmental facilities” in Class 009; and
“HVAC equipment, namely, environmental control apparatus, namely, heating, ventilation, and air conditioning units, heat pumps, portable spot cooling units, air and water cooled condensing units, air handlers and de-humidifiers, cooling evaporators, ventilating equipment, namely, exhaust fans, air conditioning apparatus and refrigeration equipment, namely, refrigeration units comprised of fans, chillers, cooling coils sprayers and pumps,” in Class 011.
The above bolded wording in 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 this case, the application originally identified the goods as follows: “HVAC equipment and controllers as part of HVAC equipment.”
However, the proposed amendment identifies the following goods: “valve activators, actuators, automatic valves and dampers, computer software and operating system software for onsite, remote and internet-based operations used to operate building automation control systems, namely, heating, ventilation, air conditioning, refrigeration, for industrial, commercial and governmental facilities” without reference to “HVAC equipment and controllers as part of HVAC equipment.”
This portion of the proposed amendment is beyond the scope of the original identification because it omits the prefatory language: “equipment and controllers as part of HVAC equipment.”
If accurate, applicant may adopt the following formulation for drafting an acceptable identification. The suggested language has been bolded for applicant’s convenience.
Class 007: HVAC equipment, namely, pneumatic valve actuators
Class 009: Electric and electronic controls for HVAC equipment, namely, heating, ventilating, air conditioning, refrigeration, energy, lighting, fire alarm, and security access systems, and component and replacement parts thereof, automatic pressure control machines and instruments that react to temperature and pressure for heating and air conditioning, apparatus to measure and control, namely, electric, electronic, electromechanical, and pneumatic controllers, sensors for controllers, thermostats, humidistats; HVAC equipment, namely, electric and electronic valve activators, actuators, automatic valves and dampers, computer software and operating system software for onsite, remote and internet-based operations used to operate building automation control systems, namely, heating, ventilation, air conditioning, refrigeration, for industrial, commercial and governmental facilities
Class 011: HVAC equipment, namely, environmental control apparatus, namely, heating, ventilation, and air conditioning units, heat pumps, portable spot cooling units, air and water cooled condensing units, air handlers and de-humidifiers, cooling evaporators, ventilating equipment, namely, exhaust fans, air conditioning apparatus and refrigeration equipment, namely, refrigeration units comprised of fans, chillers, cooling coils sprayers and pumps,
See TMEP §1402.01.
This requirement is hereby made Final.
Advisories
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.
Multiclass Advisories
(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 fees 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 (3) classes; however, applicant submitted fees sufficient for only two (2) classes. 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.
Proper Response to a Final Action
(1) A response that fully satisfies all outstanding requirements and/or resolves all outstanding refusals.
(2) An appeal to the Trademark Trial and Appeal Board, with the appeal fee of $100 per class.
37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.
In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues. TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). The petition fee is $100. 37 C.F.R. §2.6(a)(15).
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.
