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: 5/12/2016

 

 

This is further to applicant’s response of March 22, 2016.

 

STATUS:  Applicant submits a 2(f) claim to overcome the Section 2(e)(4) surname refusal.  This is not acceptable, as will be discussed below.  In addition, applicant submits a copy of the foreign registration supporting its 44(e) filing basis.  Finally, applicant responded satisfactorily to the requirement to clarify indefinite language in the identification. 

 

SURNAME REFUSAL – 2(F) CLAIM FAILS AS TO SOME SERVICES

 

Applicant submits a 2(f) claim to overcome the surname refusal.  The claim requires clarification.

 

Pursuant to TMEP Section 1212.08, the same standards for establishing acquired distinctiveness apply whether the application is based on §1(a), §44, or §66(a). Although dates of first use are not required in applications based solely on §44 or §66(a), reference to length of use in commerce or information as to specific dates of use in commerce, presented in support of the claim of acquired distinctiveness, is clearly relevant to a determination of the acceptability of the claim.

 

2(f) Claim Based on Years’ Use

 

The examining attorney has determined that the surname refusal under Section 2(e)(4) will be maintained and continued because the 2(f) claim requires clarification, as will be discussed below.  The examining attorney incorporates by reference the arguments and evidence presented in the September 3, 2015 Office Action in support of a surname refusal.

 

In applications based on §44(d), §44(e), or §66(a) of the Trademark Act, 15 U.S.C. §1126(d), §1126(e), §1141f(a), registration may be sought under §2(f) as to the entire mark upon showing that the mark has acquired distinctiveness in commerce that may lawfully be regulated by the U.S. Congress. See In re Etablissements Darty et Fils, 759 F.2d 15, 18, 225 USPQ 652, 654 (Fed. Cir. 1985).  The same standards for establishing acquired distinctiveness apply whether the application is based on §1(a), §44, or §66(a). Although dates of first use are not required in applications based solely on §44, reference to length of use in commerce or information as to specific dates of use in commerce, presented in support of the claim of acquired distinctiveness, is clearly relevant to a determination of the acceptability of the claim.

 

The applicant may not rely on use other than use in commerce that may be regulated by the U.S. Congress in establishing acquired distinctiveness. Evidence of use solely in a foreign country, or between two foreign countries, is not evidence of acquired distinctiveness in the United States. In re Rogers, 53 USPQ2d 1741, 1746 (TTAB 1999).

 

If applicant believes that its mark has acquired distinctiveness in the United States, that is, that it has become a distinctive source indicator for the goods and/or services, applicant may seek registration on the Principal Register under Trademark Act Section 2(f) based on (1) extrinsic evidence and/or (2) a verified statement of applicant’s substantially exclusive and continuous use of the applied-for mark in commerce that the U.S. Congress may lawfully regulate for at least the five years prior to the date of the amendment to Section 2(f).  See 15 U.S.C. §1052(f); TMEP §§1010, 1212.08.  The USPTO will decide each case on its own merits.  Applicant has chosen option (2).  For option (2), to amend the application to assert Section 2(f) based on five years’ use (option 2 above), applicant should meet two requirements:  a) provide information regarding the length of use of the mark in commerce and/or dates of use, and b) include the written statement claiming acquired distinctiveness.

 

Here, applicant submits the written statement claiming acquired distinctiveness as follows:  “The DYSON marks have become distinctive for Applicant’s goods and services through Applicant’s substantially exclusive and continuous use of the DYSON marks in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately prior to the filing of this response.”  (See Part B of response submitted on March 2, 2016).

 

However, for the second requirement, namely, that applicant must provide information regarding the length of use of the mark in commerce and/or dates of use, there is an inconsistency on the record.  Right before providing the above statement, applicant prefaces it by stating “Applicant first used the DYSON marks in October 2002 in connection with vacuum cleaners, vacuum cleaner parts and fittings, floor and carpet cleaning preparations, and cleaning preparations for removing dirt and odors from floors and carpets.  (Declaration of Gillian Ruth Smith dated February 5, 2016 (“Smith Decl.”), ¶ 5, attached herewith as Exhibit A.)  Since then, Applicant has expanded the DYSON product line to include hand dryers (in 2007), fans (in 2009), heaters (in 2011) and lamps and lighting fixtures (in 2015).  (Id.)  Applicant has widely promoted its products throughout the U.S. and worldwide through television commercials, magazine and newspaper advertisements, billboards, and a variety of street level signs.  (Id. ¶ 6.)”

 

The list of goods in the above statement does not include the services listed in the application:  Installation, maintenance, servicing and repair of household appliances; installation, maintenance, servicing and repair of vacuum cleaners and other cleaning apparatus; installation, maintenance, servicing and repair of hand drying apparatus; installation, maintenance, servicing and repair of air conditioning apparatus, fans, fan heaters, purifiers, humidifiers, ceiling fans and hair dryers; installation, maintenance, servicing and repair of lighting apparatus and installations; rental and leasing of hand dryers.

 

Thus, there is an inconsistency with the claim.  Applicant has not provided information regarding the length of use of the mark in commerce and/or dates of use as it pertains to the services in the application, so the 2(f) claim based on years’ use fails as a way to overcome the surname refusal.  The Smith Declaration provides information about goods other than these services, so applicant has not met the burden of claiming 2(f) based on use for the identified services.   

 

VERIFIED STATEMENT OF FIVE YEARS’ USE:

 

To amend the application to assert Section 2(f) based on five years’ use, applicant should provide information regarding the length of use of the mark in commerce and/or dates of use as to the identified services, and include the following written statement claiming acquired distinctiveness:

 

The mark has become distinctive of the services through the applicant’s substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement.

 

See 15 U.S.C. §1052(f); 37 C.F.R. §2.41(a)(2); TMEP §§1010, 1212.05(d), 1212.08.  Applicant must verify this statement with an affidavit or signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.41(a)(2); TMEP §1212.05(d); see 37 C.F.R. §2.193(e)(1).

 

 

 2(F) claim Based on Ownership of 2 Prior Registrations

 

Applicant claims that the applied-for mark has acquired distinctiveness under Trademark Act Section 2(f) based on applicant’s prior registrations (3,495,149 and 3,495,150) for the same mark.  The registrations are for use in connection with Class 3 and 7 goods (“Cleaning preparations for carpets; preparations for removing dirt from carpets; stain removal preparations for carpets; Apparatus for cleaning floors and carpets, namely, vacuum cleaners; floor tools for vacuum cleaners, namely, floor tool cleaner heads and brushes; separation apparatus, namely, separators for removing dust and debris from the airflow in vacuum cleaners; hoses and filters for vacuum cleaners and parts and fittings for all the aforesaid goods”) and with Class 37 services, namely “repair, servicing and maintenance of vacuum cleaners, and floor tools for all of the aforesaid goods.”  There is no reference to goods or services related to hand drying apparatus, air conditioning apparatus, fans, fan heaters, purifiers, humidifiers, ceiling fans and hair dryers, lighting apparatus and installations or to rental/leasing services for hand dryers. 

 

The similarity or relatedness of the goods and/or services in the prior registrations and the following services in the instant application is not self-evident and therefore applicant’s Section 2(f) claim is not acceptable:  Installation services related to household appliances, and other cleaning apparatus, hand drying apparatus, air conditioning apparatus, fans, fan heaters, purifiers, humidifiers, ceiling fans and hair dryers, lighting apparatus and installations; AND maintenance, servicing and repair of household appliances; installation, maintenance, servicing and repair of hand drying apparatus; installation, maintenance, servicing and repair of air conditioning apparatus, fans, fan heaters, purifiers, humidifiers, ceiling fans and hair dryers; installation, maintenance, servicing and repair of lighting apparatus and installations; rental and leasing of hand dryers.  See TMEP §1212.04(c). 

 

Although an applicant’s ownership of one or more active prior registrations of the same mark may be sufficient for a prima facie showing of acquired distinctiveness, the prior registration(s) must be for sufficiently similar or related goods and/or services such that distinctiveness will transfer to the goods and/or services in the application.  See 37 C.F.R. §2.41(a)(1); In re Rogers, 53 USPQ2d 1741, 1744 (TTAB 1999); TMEP §1212.04, (c).

 

Therefore, applicant must submit evidence and an explanation as to how the goods and/or services in the claimed active prior registrations are similar or related to “Installation services related to household appliances, other cleaning apparatus, hand drying apparatus, air conditioning apparatus, fans, fan heaters, purifiers, humidifiers, ceiling fans and hair dryers, lighting apparatus and installations; AND maintenance, servicing and repair of household appliances; installation, maintenance, servicing and repair of hand drying apparatus; installation, maintenance, servicing and repair of air conditioning apparatus, fans, fan heaters, purifiers, humidifiers, ceiling fans and hair dryers; installation, maintenance, servicing and repair of lighting apparatus and installations; rental and leasing of hand dryers” such that distinctiveness will transfer to these services in the application.  See 37 C.F.R. §2.61(b); Bausch & Lomb, Inc. v. Leupold & Stevens, Inc., 6 USPQ2d 1475, 1477-78 (TTAB 1988); TMEP §1212.04(c).

 

While these registrations are for arguably the same mark, these prior registrations are for goods and services that are different from and not necessarily related to the above-referenced services in the application.  The services in this current application relate to installation of various items, which is not a service included in the prior registrations. The services in the current application refer to maintenance, servicing and repair services of various items, other than vacuum cleaners and floor tools, and refers to rental and leasing of hand dryers, not mentioned at all in the prior registrations, so that the identification in this application is broader in scope than the prior registrations. 

 

Since the showing necessary to establish relatedness depends upon the nature of the goods and/or services involved and the language used to identify them in the application, the examining attorney finds that applicant has failed to show sufficient relatedness so that the distinctiveness will transfer to the above-referenced services in the current application. 

 

The registrations refer to actual cleaning appliances/apparatus and preparations for cleaning carpets, as well as repair, servicing and maintenance of vacuum cleaners and complementary floor tools.  The registrations cover a very narrow scope of goods and services, only limited to vacuum cleaners, and floor tools and, separators and accessories for in vacuum cleaners.  The application refers to installation, which is separate from and not one in the same as maintenance, servicing and repair of a wide range of household appliances and other products.  The application services cover a broader scope.  It is not clear how the previously created distinctiveness will transfer to a broader set of services in this application.  Applicant provides no examples to show relatedness and the similarity of the services, so it is not self-evident.  There is no evidence on record about whether cleaning appliances/apparatus and preparations for cleaning carpets, as well as repair, servicing and maintenance of vacuum cleaners and complementary floor tools come from the same source as Installation services related to household appliances, other cleaning apparatus, hand drying apparatus, air conditioning apparatus, fans, fan heaters, purifiers, humidifiers, ceiling fans and hair dryers, lighting apparatus and installations; AND maintenance, servicing and repair of household appliances; installation, maintenance, servicing and repair of hand drying apparatus; installation, maintenance, servicing and repair of air conditioning apparatus, fans, fan heaters, purifiers, humidifiers, ceiling fans and hair dryers; installation, maintenance, servicing and repair of lighting apparatus and installations; rental and leasing of hand dryers, or whether purchasers of these services coincide. 

 

 

RESPONSE GUIDELINES AND PARTIAL ABANDONMENT ADVISORY

 

If applicant does not respond to this Office action within the six-month period for response, the following goods will be deleted from the application:  Installation services related to household appliances, other cleaning apparatus, hand drying apparatus, air conditioning apparatus, fans, fan heaters, purifiers, humidifiers, ceiling fans and hair dryers, lighting apparatus and installations; AND maintenance, servicing and repair of household appliances; installation, maintenance, servicing and repair of hand drying apparatus; installation, maintenance, servicing and repair of air conditioning apparatus, fans, fan heaters, purifiers, humidifiers, ceiling fans and hair dryers; installation, maintenance, servicing and repair of lighting apparatus and installations; rental and leasing of hand dryers. 

 

The application will then proceed with the following services only:  Installation, maintenance, servicing and repair of vacuum cleaners.  See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

 

For this application to proceed further, applicant must explicitly address each refusal and/or requirement raised in this Office action.  If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register.  Applicant may also have other options for responding to a refusal and should consider such options carefully.  To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements.  For more information and general tips on responding to USPTO Office actions, response options, and how to file a response online, see “Responding to Office Actions” on the USPTO’s website.

 

If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end and the trademark will fail to register.  See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a); TMEP §§718.01, 718.02.  Additionally, the USPTO will not refund the application filing fee, which is a required processing fee.  See 37 C.F.R. §§2.6(a)(1)(i)-(iv), 2.209(a); TMEP §405.04.

 

Where the application has been abandoned for failure to respond to an Office action, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to active status.  See 37 C.F.R. §2.66; TMEP §1714.  There is a $100 fee for such petitions.  See 37 C.F.R. §§2.6, 2.66(b)(1).

 

 

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. 

 

 

 

/Giselle Agosto-Hincapie/

Examining Attorney Advisor

Trademarks Law Office 102

giselle.agosto@uspto.gov (Informal inquires only)

571-272-5868

 

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 5/12/2016 FOR U.S. APPLICATION SERIAL NO. 86635964

 

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 5/12/2016 (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.