Response to Office Action

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 07/31/2017)

---

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 07/31/2017)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 86635964 DYSON(Standard Characters, see http://tmng-al.gov.uspto.report/resting2/api/img/86635964/large) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

Dear Commissioner:

This communication is being filed in response to the office action dated September 3, 2015.

Acquired Distinctiveness

 

The Examining Attorney has refused registration on the basis that the DYSON mark is primarily merely a surname.  15 U.S.C. § 1052(e)(4).  Applicant respectfully submits that the DYSON mark has become distinctive for DYSON goods and services, and that this distinctiveness will transfer to the applied-for services upon use in commerce.  A claim of distinctiveness under 2(f) may be filed in an intent-to-use application if the mark has been used on related goods or services, the mark has become distinctive for those goods or services, and that distinctiveness will transfer to the goods and/or services in the intent-to-use application when use in commerce begins.  T.M.E.P. § 1212.09(a) (citing In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1347, 57 U.S.P.Q. 2d 1807, 1812 (Fed. Cir. 2001)). 

The Trademark Trial and Appeal Board has set forth a two-part requirement for showing that a mark in an intent-to-use application has acquired distinctiveness: The applicant must show (1) the same mark has acquired distinctiveness in connection with other goods and/or services with which the mark has been used in commerce, and (2) a sufficient relationship exists between those goods and/or services and the goods and/or services in the intent-to-use application, such that upon use, the acquired distinctiveness will transfer to the goods and/or services in the application.  T.M.E.P. § 1212.09(a) (quoting In re Rogers, 53 U.S.P.Q. 2d 1741, 1744 (T.T.A.B. 1999)). 

I.          The DYSON Marks Have Acquired Distinctiveness

            The Trademark Manual of Examining Procedure outlines three ways for an applicant to show that the same mark has acquired distinctiveness for goods and/or services related to the applied-for goods and/or services: (1) Registration of the mark on the Principal Register, (2) Five years use of the mark, which provides prima facie evidence of distinctiveness, or (3) Actual evidence of acquired distinctiveness for the mark.  T.M.E.P. § 1212.09(a).  Applicant can establish that DYSON has acquired distinctiveness through all three means, but in this response, Applicant will focus on the first two methods of proof. 

A.        Applicant Has Registrations on the Principal Register for the DYSON Marks

            DYSON has become distinctive for sufficiently related goods and services as evidenced by the ownership of U.S. Registration Nos. 3,495,149 and 3,495,150 on the Principal Register.  See T.M.E.P. § 1212.04 (quoting Trademark Rule 2.41(a)(1), 37 C.F.R. §2.41(a)(1) (“Provid[ing] that the examining attorney may accept, as prima facie evidence of acquired distinctiveness, ownership by the applicant of one or more active prior registrations of the same mark on the Principal Register.”)). 

Applicant owns U.S. Registration No. 3,495,149 for the DYSON (stylized) mark for “cleaning preparations for carpets, preparations for removing dirt from carpets; stain removal preparations for carpets” in International Class 3, “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” in International Class 7, and “repair, servicing and maintenance of vacuum cleaners, and floor tools for all of the aforesaid goods” in International Class 37. 

Applicant owns U.S. Registration No. 3,495,150 for  the DYSON word mark for “cleaning preparations for carpets, preparations for removing dirt from carpets; stain removal preparations for carpets” in International Class 3, “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” in International Class 7, and “repair, servicing, and maintenance of vacuum cleaners, and floor tools for all of the aforesaid goods” in International Class 37.          

These registrations are prima facie evidence that the DYSON marks have acquired distinctiveness.  See T.M.E.P. § 1212.04.   

B.        Applicant Has Used the DYSON Marks in Commerce for Five Years

            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, fans, heaters, humidifiers, and lamps and lighting fixtures (2015).  (Id. ¶ 4, 5.)  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.)  Applicant is not aware of anyone else using DYSON as a trademark for any of the applied for goods or services.  (Id. ¶ 7.) 

            As a result, 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.  (Id. ¶ 8.)  See T.M.E.P. § 1212.05 (quoting 15 U.S.C. § 1052(f) (“providing that ‘proof of substantially exclusive and continuous use’ of a designation ‘as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made’ may be accepted as prima facie evidence that the mark as acquired distinctiveness as used in commerce with the applicant’s goods or services”)). 

C.        The DYSON Marks Are Legally Equivalent To The Applied-For Mark

A mark in a previous registration constitutes the same mark as an applied-for mark for the purposes of a claim of acquired distinctiveness when it is the “legal equivalent” of that mark.  T.M.E.P. § 1212.04(b).  Two marks are deemed legally equivalent when they “create[ ] the same, continuing commercial impression such that the consumer would consider them both the same mark.”  In re Dial-A-Mattress Operating Corp., 240 F.3d at 1347.

Applicant owns two DYSON marks for which it has shown acquired distinctiveness: (1) the DYSON word mark, which is identical to the applied-for mark, and (2) the DYSON (stylized) mark, which utilizes a stylized lower-case font to display the DYSON word mark.  The DYSON word mark registration encompasses all uses of the DYSON mark, regardless of the stylization.  Thus, the marks are legally equivalent for purposes of assessing acquired distinctiveness.  In fact, they are far more similar than cases where the Board has found that two different stylized marks, or marks with additional words, are legally equivalent for purposes of a claim of acquired distinctiveness.  See e.g., Kellogg Co. v. Gen. Mills, Inc., 82 U.S.P.Q.2d 1766, 1770 (T.T.A.B. 2007) (finding two stylized marks that differ with a “slight degree of stylization of the letters” to be “essentially the same [ ] mark”); In re Best Products Co., Inc. 231 U.S.P.Q. 988, 989 n.6 (T.T.A.B. 1986) (finding the difference between the BEST Design Mark and the BEST JEWELRY Design Mark “immaterial” for the purpose of a Section 2(f) claim).  Here, there is a single DYSON mark, which Applicant has protected and used in a specific stylized format for nearly 15 years.  Consumers recognize the DYSON mark, regardless of the stylization in which it appears, as a single DYSON mark indicating a single source for Applicant’s goods and services.  (Smith Decl.¶ 9.)  Accordingly, the DYSON word mark and the DYSON (stylized) mark are legal equivalents.  

II.        A Strong Relationship Exists Between the DYSON Goods and Services and the Services Recited in Serial Application No. 86/653,964

 

            Applicant must demonstrate that the goods and services for which acquired distinctiveness has attached are related to the services in the application, in order to show that acquired distinctiveness will transfer to the applied-for services when use in commerce begins.  Kellogg Co. v. General Mills, Inc., 82 U.S.P.Q. 2d at 1770 (quoting In re Dial-A-Mattress Operating Corp., 240 F.3d at 1347 (citing T.M.E.P. § 1219.09(a)). 

If the relatedness of the respective goods and/or services is self-evident, the examining attorney may reach such a conclusion without additional evidence.  T.M.E.P. § 1212.04(c) (providing a prior registration for hair shampoo and a new application for hair conditioner as an example of a self-evident relationship between goods); see also In re Owens-Illinois Glass Co., 143 U.S.P.Q. 431, 432 (T.T.A.B. 1964) (finding cut-glass tableware and plastic tableware sufficiently similar because “purchasers of one kind of tableware might well be prospective purchasers of the other” and “purchasers would be likely to ascribe a common origin were they to be sold under the same mark”).

As an initial matter, the services recited in the instant application are highly related to existing DYSON services.  Namely, the application lists various maintenance, repair, and leasing services for its products, and Applicant has already acquired distinctiveness for maintenance, repair, and servicing of its vacuum cleaners.  Since Applicant already offers services to facilitate use and maintenance of its vacuum cleaners, consumers will encounter the Class 37 services in the Application and recognize them as an expansion to the range of products covered by Applicant’s services. 

Finally, consumers will understand Applicant’s rental and leasing services of hand dryers as a natural and obvious extension of its role as a manufacturer and retailer of the same.  See, e.g.  In re Lytle Eng’g & Mfg. Co., 125 U.S.P.Q. 308, 309 (T.T.A.B. 1960) (finding the relationship between the planning, preparation and production of technical publications on one hand, and brochures, catalogues and bulletins on the other to be “obvious”).  Since hand dryers can be considered a major purchase, services that provide use of such products at a lower capital cost via a leasing model are an obvious variation on Applicant’s position as a manufacturer of such products.      

            In conclusion, Applicant’s DYSON mark has clearly acquired distinctiveness for goods and services sufficiently related to the applied-for services.  This will result in the acquired distinctiveness transferring to the applied-for services upon use in commerce.  Accordingly, Applicant respectfully requests that the Examining Attorney find that the mark is sufficiently distinctive and may proceed to publication. 

EVIDENCE
Evidence in the nature of Declaration of Gillian Ruth Smith. has been attached.
Original PDF file:
evi_20413058-20160302140154588049_._Exhibit_A_for_86635964.pdf
Converted PDF file(s) ( 4 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 037 for 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 household appliances and hand dryers; rental and leasing of air conditioning apparatus, fans, fan heaters, purifiers, humidifiers and ceiling fans; rental and leasing of lighting apparatus and installations
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Filing Basis: Section 44(d), Priority based on foreign filing: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services, and asserts a claim of priority based upon a foreign application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization, and asserts a claim of priority based upon a foreign application. For a certification application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ European Community application number 014000426 filed 04/27/2015]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: 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 household appliances and hand dryers; rental and leasing of hand dryers.; rental and leasing of air conditioning apparatus, fans, fan heaters, purifiers, humidifiers and ceiling fans; rental and leasing of lighting apparatus and installationsClass 037 for 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.
Deleted Filing Basis: 1(b); and 44(d).
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ European Community registration number 014000426 registered 10/22/2015 with a renewal date of __________ and an expiration date of 04/27/2025 ], and translation thereof, if appropriate. For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users on or in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant.
Original PDF file:
FRU0-20413058-140154588_._UST1478I_-_CTM014000426.pdf
Converted PDF file(s) ( 5 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4
Foreign Registration-5

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

SIGNATURE(S)
Declaration Signature
The filing Attorney has elected not to submit the signed declaration, believing no supporting declaration is required under the Trademark Rules of Practice.

Response Signature
Signature: /JLT/     Date: 03/02/2016
Signatory's Name: Jennifer Lee Taylor
Signatory's Position: California Bar Member, Attorney of Record

Signatory's Phone Number: 415-268-6538

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the owner/holder in this matter: (1) the owner/holder has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 86635964
Internet Transmission Date: Wed Mar 02 14:19:40 EST 2016
TEAS Stamp: USPTO/ROA-XXX.XXX.X.X-201603021419409856
04-86635964-550ae86d19929d21f8916c81f586
5d12dbcc4d6818ba344f5252e2d658ef972a7f5-
N/A-N/A-20160302140154588049