Suspension Letter

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

SUSPENSION NOTICE: NO RESPONSE NEEDED

 

ISSUE/MAILING DATE: 2/23/2018

 

The Office has reassigned this application to the undersigned trademark examining attorney. In an office action of November 14, 2017, a refusal under Section 2(e)(1) was issued on the basis that the mark is merely descriptive of the goods. In addition, a previously issued refusal under Section 2(d) of the Trademark Act was maintained and continued.

 

The undersigned has reviewed the response filed on January 31, 2018, and determined the following. The trademark examining attorney is suspending action on the application for the reason stated below.  See 37 C.F.R. §2.67; TMEP §§716 et seq. 

 

PENDING CIVIL PROCEEDING:  The pending civil proceeding(s) below pertains to (1) a registered mark that conflicts with applicant’s mark under Trademark Act Section 2(d), (2) a mark in a pending application(s) that could conflict with applicant’s mark under Section 2(d) if it registers, and/or (3) the registrability of applicant’s mark.  See 15 U.S.C. §1052; 37 C.F.R. §2.83; TMEP §§716.02(a), (c)-(d), 1208 et seq.  Because the civil proceeding(s) pertains to an issue that could directly affect whether applicant’s mark can be registered, action on this application is suspended pending termination of the civil proceeding(s).  See 37 C.F.R. §2.67; TMEP §§716.02(a), (c)-(d).

 

            - Cancellation No. 92067500

 

The USPTO will periodically conduct a status check of the application to determine whether suspension remains appropriate, and the trademark examining attorney will issue as needed an inquiry letter to applicant regarding the status of the matter on which suspension is based.  TMEP §§716.04, 716.05.  Applicant will be notified when suspension is no longer appropriate.  See TMEP §716.04.

 

No response to this notice is necessary; however, if applicant wants to respond, applicant should use the “Response to Suspension Inquiry or Letter of Suspension” form online at http://teasroa.gov.uspto.report/rsi/rsi.

 

REFUSAL CONTINUED AND MAINTAINED:  The refusal under Section 2(e)(1) of the Trademark Act on the basis that the mark is merely descriptive of the goods is maintained and continued. Applicant’s arguments will be fully addressed when the application is removed from suspension. Applicant stated in the response filed on January 31, 2018, that applicant’s vending machines do not feature MiMo technology. Thus, the following refusal under Section 2(e)(1) is now issued, as set forth below.

 

MISDESCRIPTIVE REFUSAL UNDER SECTION 2(E)(1)

 

Registration is refused because the applied-for mark is deceptively misdescriptive of applicant’s goods.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see In re Hinton, 116 USPQ2d 1051, 1051-52 (TTAB 2015) (holding THCTea deceptively misdescriptive of tea-based beverages not containing THC); In re Schniberg, 79 USPQ2d 1309, 1312 (TTAB 2006) (holding SEPTEMBER 11, 2001 deceptively misdescriptive of history books and entertainment services not pertaining to the events of September 11, 2001); TMEP §1209.04.

 

The test for determining whether a mark is deceptively misdescriptive has two parts:  (1) whether the mark misdescribes the goods and/or services; and if so, (2) whether consumers are likely to believe the misrepresentation.  See In re White Jasmine LLC, 106 USPQ2d 1385, 1394 (TTAB 2013) (citing In re Quady Winery, Inc., 221 USPQ 1213, 1214 (TTAB 1984)); TMEP §1209.04. 

 

Regarding the first part of the test, a mark is misdescriptive when the mark merely describes a significant aspect of the goods and/or services that the goods and/or services could plausibly possess but in fact do not.  In re Hinton, 116 USPQ2d 1051, 1052 (TTAB 2015); In re Schniberg, 79 USPQ2d 1309, 1312 (TTAB 2006); In re Phillips-Van Heusen, 63 USPQ2d 1047, 1048 (TTAB 2005); see TMEP §1209.04.  To be merely descriptive, a mark must immediately convey knowledge of a quality, feature, function, or characteristic of an applicant’s goods or services.  In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (quoting In re Bayer Aktiengesellschaft, 488 F.3d 960, 963, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)); TMEP §1209.01(b).

 

The attached evidence and the evidence of record shows that vending machines may feature a MiMo antenna. For example, the following excerpt from the AntennaPlus website (page 10 of 11/17/2017 Office Action) shows that these antennas may be used in vending machines:

 

The AP-M2M1 Double-Cell/LTE is an all-in-one, low profile housing with 2 Multiple-In, Multiple-Out (MIMO) high gain Cellular/LTE antennas inside that is used with 4G cellular data modems and routers to provide the fastest data throughput speeds and enhance the cellular signal. This is typically used on kiosks, vending machines, digital signage and other machine to machine applications requiring a small, covert antenna to get the signal outside of the metal enclosure.

 

It is plausible that the goods would possess such a feature or characteristic because the evidence of record establishes that MiMo devices may be used in vending machines.  However, in this case, it appears the goods do not in fact possess this feature, as stated by applicant.

 

In this case, the attached evidence and that of record shows that the reasonably prudent consumer is likely to believe the representation because vending machines may feature MiMo antennas.

 

In conclusion, registration is refused in the alternative and under Section 2(e)(1) of the Trademark Act because the mark is misdescriptive of the goods.

 

 

 

/Khanh M. Le/

Trademark Examining Attorney

Law Office 116

U.S. Patent & Trademark Office

Khanh.Le@USPTO.gov

(571) 272-9435

 

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 Trademark Electronic Application System (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 2/23/2018 FOR U.S. APPLICATION SERIAL NO.87496005

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.gov.uspto.report/, 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)  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

 

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.