To: | Ames Research Laboratories, Inc. (TM-PDX@STOEL.COM) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87180288 - KOTE-A-DECK - 58277-205 |
Sent: | 1/5/2017 5:50:42 PM |
Sent As: | ECOM121@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87180288
MARK: KOTE-A-DECK
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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: Ames Research Laboratories, Inc.
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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. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
ISSUE/MAILING DATE: 1/5/2017
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 OF OFFICE’S DATABASE OF MARKS
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).
SUMMARY OF ISSUES
· Refusal Under Trademark Act Section 2(e)(1) – Mark Is Merely Descriptive Of The Goods
· Amendment To The Identification Of Goods Required
REFUSAL UNDER TRADEMARK ACT SECTION 2(e)(1) – MARK IS MERELY DESCRIPTIVE OF THE GOODS
In this case, applicant seeks to register the mark KOTE-A-DECK, for, “Paints; weatherproofing coatings; coatings for roof decks; elastomeric coatings for decks.” The attached evidence from American Heritage Dictionary shows that COAT means, “A layer of material covering something else; a coating.” Further evidence shows that DECK means, “An unroofed platform, typically with a railing, that adjoins a building or is built on a rooftop.” Therefore, the mark is descriptive because it merely describes the purpose of applicant’s goods, namely, to create a layer of protective paint, covering an unroofed platform, adjoining a building.
Adding punctuation marks to a descriptive term will not ordinarily change the term into a non-descriptive one. In re Vanilla Gorilla, L.P., 80 USPQ2d 1637, 1639 (TTAB 2006) (holding 3-0’S merely descriptive of car wheel rims); In re Samuel Moore & Co., 195 USPQ 237, 240 (TTAB 1977) (holding SUPERHOSE! merely descriptive of hydraulic hose); see DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1253-54, 103 USPQ2d 1753, 1757-58 (Fed. Cir. 2012) (holding the Board failed to support findings that SNAP!, where the exclamation point appeared broken in half, was not merely descriptive of medical syringes using snap-off plungers); TMEP §1209.03(u). Thus, although the wording in the mark is separated by hyphens, instead of spaces, the hyphens add very little to the commercial impression of the mark. Therefore the addition of the hyphens does not obviate the refusal under Section 2(e)(1).
Further, 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 Quik-Print Copy Shop, Inc., 616 F.2d 523, 526 & n.9, 205 USPQ 505, 507 & n.9 (C.C.P.A. 1980) (holding “QUIK-PRINT,” phonetic spelling of “quick-print,” merely descriptive of printing and photocopying services); In re Carlson, 91 USPQ2d 1198, 1203 (TTAB 2009) (holding “URBANHOUZING,” phonetic spelling of “urban” and “housing,” merely descriptive of real estate services); In re The State Chem. Mfg. Co., 225 USPQ 687, 689-90 (TTAB 1985) (holding “FOM,” phonetic spelling of “foam,” merely descriptive of foam rug shampoo); TMEP §1209.03(j). Thus, while applicant intentionally misspells the word “coat” as “KOTE” it is likely that purchasers would perceive this spelling as the descriptive wording “coat.” Therefore, the intentional misspelling of the descriptive wording in the mark does not obviate the refusal under Section 2(e)(1).
Because the mark is descriptive of the purpose of the goods, the examining attorney must refuse registration of the mark. Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration. However, if applicant responds to the refusal, applicant must also respond to the requirements set forth below.
AMENDMENT TO IDENTIFICATION OF GOODS REQUIRED
Applicant may substitute the following wording, if accurate:
In Class 2:
Paints; Weatherproofing coatings; Coatings in the nature of {applicant must specify the nature of the goods, e.g. stains, fire retardant coatings, elastomeric-based coatings, etc.} for roof decks; Elastomeric coatings for decks
Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended. See TMEP §1402.06(a)-(b). The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification. TMEP §§1402.06(b), 1402.07(a)-(b). Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted. TMEP §1402.07(e).
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.
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 or e-mail without incurring this additional fee.
/Alexander Mangubat/
Alexander Mangubat
Examining Attorney
USPTO Law Office 121
(571) 270-3561
Alexander.Mangubat@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.