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.  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: 5/27/2019

 

INTRODUCTION

 

This new non-final Office Action is in response to the applicant’s Response to Office Action filed on May 5, 2019. Based on information and/or documentation in applicant’s response, the trademark examining attorney now issues the following new refusal(s):  Section 2(f) claim of acquired distinctiveness refused as applicant has provided no extrinsic evidence to support the claim.  See TMEP §§706, 711.02. 

 

In a previous Office action dated November 20, 2018, the trademark examining attorney refused registration of the applied-for mark based on the following:  Trademark Act Section 2(e)(1) as the mark is merely descriptive of applicant’s goods and services.  In addition, applicant was required to satisfy the following requirement:  amend the identification of goods and/or services.

 

Based on applicant’s response, the trademark examining attorney notes that the following requirement(s) have been satisfied: definite amended identification provided.  See TMEP §713.02. 

 

 

The following is a SUMMARY OF ISSUES that applicant must address:

 

•  New Issue: Section 2(f) Claim Insufficient – No Extrinsic Evidence of Acquired Distinctiveness Provided

            •     Maintained: Section 2(e)(1) Merely Descriptive Refusal

 

Applicant must respond to all issues raised in this Office action and the previous November 11, 2018 Office action, within six (6) months of the date of issuance of this Office action.  37 C.F.R. §2.62(a); see TMEP §711.02.  If applicant does not respond within this time limit, the application will be abandoned.  37 C.F.R. §2.65(a).

 

NEW ISSUE

 

SECTION 2(f) CLAIM OF ACQUIRED DISTINCTIVENESS INSUFFICIENT

 

Although applicant has asserted a Section 2(f) claim of acquired distinctiveness based on five years’ use, no extrinsic evidence has been provided to support this claim.

 

Applicant asserted a claim of acquired distinctiveness under Trademark Act Section 2(f) based on applicant’s use of the mark in commerce with applicant’s goods and/or services for five years prior to the date on which the claim is made.  See 15 U.S.C. §1052(f).  However, as the attached evidence demonstrates, the allegation of five years’ use is insufficient to show acquired distinctiveness because the applied-for mark is highly descriptive of applicant’s goods and/or services.  See In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 1336-37, 116 USPQ2d 1262, 1265 (Fed. Cir. 2015); Alacatraz Media Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1765 (TTAB 2013); TMEP §1212.05(a).  Applicant may respond by providing additional evidence of acquired distinctiveness. 

 

An applicant bears the burden of proving that a mark has acquired distinctiveness under Trademark Act Section 2(f).  In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 1335, 116 USPQ2d 1262, 1264 (Fed. Cir. 2015) (citing In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1422 (Fed. Cir. 2005)); TMEP §1212.01.  “To show that a mark has acquired distinctiveness, an applicant must demonstrate that the relevant public understands the primary significance of the mark as identifying the source of a product or service rather than the product or service itself.”  In re Steelbuilding.com, 415 F.3d at 1297, 75 USPQ2d at 1422. 

 

In the present case, applicant’s claim of acquired distinctiveness based on five years’ use in commerce is insufficient to show acquired distinctiveness of the applied-for mark because the applied-for mark “SMOK” merely describes or indicates that a characteristic, feature, and/or purpose of applicant’s goods and those goods featured via applicant’s services are used to simulate the process, experience, and effects of traditional smoking. See attached internet evidence from http://en.oxforddictionaries.com/definition/us/electronic_cigarette, http://www.ncbi.nlm.nih.gov/pmc/articles/PMC3859972/, and http://en.wikipedia.org/wiki/Electronic_cigarette.

 

To support the claim of acquired distinctiveness, applicant may respond by submitting other evidence.  See TMEP §1212.02(g).  Such evidence may include “advertising expenditures, sales success, length and exclusivity of use, unsolicited media coverage, and consumer studies (linking the name to a source).”  In re Change Wind Corp., 123 USPQ2d 1453, 1467 (TTAB 2017) (quoting In re Steelbuilding.com, 415 F.3d 1293, 1300, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005)).  A showing of acquired distinctiveness need not consider all of these types of evidence; no single factor is determinative.  In re Steelbuilding.com, 415 F.3d at 1300, 75 USPQ2d at 1424; see TMEP §§1212.06 et seq.  Rather, the determination involves assessing all of the circumstances involving the use of the mark.  See In re Steelbuilding.com, 415 F.3d at 1300, 75 USPQ2d at 1424 (citing Thompson Med. Co., Inc. v. Pfizer Inc., 753 F.2d 208, 217, 225 USPQ2d 124, 131-32 (Fed. Cir. 1985)).

 

If applicant cannot submit additional evidence to support the claim of acquired distinctiveness, applicant may respond to the refusal by arguing in support of registration and/or amending the application to seek registration on the Supplemental Register.  See 15 U.S.C. §1091(a); 37 C.F.R. §§2.47, 2.75(a); TMEP §§801.02(b), 816.  If applicant amends the application to the Supplemental Register, applicant is not precluded from submitting evidence and arguments against this refusal.  TMEP §816.04.

 

MAINTAINED ISSUE

 

SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE

As discussed above, applicant’s Section 2(f) claim of acquired distinctiveness is insufficient to demonstrate that applicant’s mark has acquired distinctiveness. Therefore, the refusal to register the mark on the Principal Register is continued and maintained.

Although applicant’s arguments have thoughtfully reviewed and considered, the refusal to register is continued and maintained because the applied-for mark merely describes a feature, characteristic, purpose, or function of applicant’s goods and/or services.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq. Applicant’s mark is “SMOK” in standard characters for goods and services recited as “Chargers for electronic cigarettes; Batteries for electronic cigarettes; Battery chargers for electronic cigarettes; Battery covers in the nature of battery cases for electronic cigarettes” in International Class 9, “Electronic cigarettes; Oral vaporizers for smokers; Smokers' oral vaporizer refill cartridges sold empty; Electronic cigarette atomizers sold empty; Electronic cigarette refill cartridges sold empty; Component parts of electronic cigarettes in the nature of tanks for electronic cigarettes, coils for electronic cigarettes, drip tips for electronic cigarettes, tank tubes for electronic cigarettes, and silicone rings for electronic cigarettes” in International Class 34, and “On-line retail store services featuring electronic cigarettes, oral vaporizers for smokers, smokers articles and accessories for the foregoing” in International Class 35.

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods and/or services.  TMEP §1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)).  As further explained below, the term “SMOK” merely describes a feature, function, quality, characteristic, use, and/or purpose of applicant’s electronic smoking related goods and services.

In that regard, 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 Calphalon Corp., 122 USPQ2d 1153, 1163 (TTAB 2017) (holding “SHARPIN”, phonetic spelling of “sharpen,” merely descriptive of cutlery knife blocks with built-in sharpeners); In re Carlson, 91 USPQ2d 1198, 1203 (TTAB 2009) (holding “URBANHOUZING,” phonetic spelling of “urban” and “housing,” merely descriptive of real estate services); TMEP §1209.03(j). Applicant has applied to use the mark “SMOK” which is merely an intentional misspelling of the word “smoke” and the phonetic equivalent of the applied-for mark. As the term is merely missing the silent letter “E” at the end of the term, purchasers would perceive this different spelling to be the equivalent of the descriptive term “smoke”. Therefore, the applied-for mark “SMOK” will be understood to have the same meaning as the term “smoke.”

Furthermore, the determination of whether a mark is merely descriptive is made in relation to an applicant’s goods and/or services, 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 [or service] is from consideration of the mark alone is not the test.”  In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985). Accordingly, in the context of applicant’s goods and services, the term “smoke” means “the process of smoking something, especially a cigarette.” See Macmillan Dictionary evidence attached to the previous Office Action from http://www.macmillandictionary.com/dictionary/american/smoke_1. Therefore, with respect to applicant’s goods, a characteristic of such goods is that they are utilized to enable the user to smoke electronic cigarettes or similar smoking devices by simulating the experience of traditional smoking, and applicant’s Identification of Goods indicates that the applied-for goods are all used in the process of smoking electronic cigarettes. See applicant’s Identification of Goods and Services in the application dated July 31, 2018.  Further, with respect to applicant’s services, the term “SMOK” merely describes that applicant’s retail store services will feature goods which allow the purchaser to participate in the act of smoking through the use of electronic cigarettes, and the Identification of Services particularly indicates that the goods provided through the retail services pertain to items to be used by smokers. Id. Additionally, applicant’s website indicates that applicant’s goods sold through its retail channels all pertain to and serve the purpose of allowing the purchaser to engage in the process of simulating the experience of smoking. See internet evidence from applicant’s website attached to the previous Office Action from http://store.smoktech.com/ and http://store.smoktech.com/product/details/species-kit.

Furthermore, see the attached internet evidence from the website links below demonstrating that the word “smoke” is commonly used in connection with describing goods used for the smoking of electronic cigarettes and retail services in connection therewith as such goods simulate the act of smoking. See the attached internet evidence from http://www.wikihow.com/Smoke-an-E%E2%80%93Cigarette and http://www.medicinenet.com/e-cigarettes_vs_cigarettes/article.htm.

Therefore, the term “SMOK” immediately conveys information regarding a feature, purpose, and/or characteristic of applicant’s goods and the services featuring such goods, namely, that such goods may be used for the act of smoking. Moreover, although applicant argues that the term “vaping” is commonly used in connection with electronic cigarettes and related devices, this merely indicates that this particular term is also descriptive of the applied-for goods and services; however, it does not preclude the finding that the term “smoke” is also descriptive of such goods and services as demonstrated by the evidence attached hereto and to the previous Office Action.

To that point, third-party registrations featuring goods and/or services the same as or similar to applicant’s goods and/or services are probative evidence on the issue of descriptiveness where the relevant word or term is disclaimed, registered under Trademark Act Section 2(f) based on acquired distinctiveness, or registered on the Supplemental Register.  E.g., In re Morinaga Nyugyo Kabushiki Kaisha, 120 USPQ2d 1738, 1745 (TTAB 2016) (quoting 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 addition to the third-party registrations attached to the previous Office Action, it is instructive that applicant’s prior registrations for electronic cigarette related goods and related accessories have either disclaimed the term “SMOK” or are found on the Supplemental Register, thus indicating that applicant also considers this term to be merely descriptive.

Applicant argues that any doubt regarding the mark’s descriptiveness should be resolved on applicant’s behalf.  E.g., In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 1571 4 USPQ2d 1141, 1144 (Fed. Cir. 1987); In re Grand Forest Holdings, Inc., 78 USPQ2d 1152, 1156 (TTAB 2006).  However, in the present case, the evidence of record leaves no doubt that the mark is merely descriptive.

Accordingly, the determination that the application must be denied registration on the Principal Register based on Section 2(e)(1) of the Trademark Act as the term “SMOK” is merely descriptive of the applied-for goods and services is continued and maintained.

COMMUNICATIONS WITH THE TRADEMARK OFFICE

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

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 $125 per 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.  

 

 

 

Lauren Roncoroni

/Lauren Roncoroni/

Trademark Examining Attorney

Law Office 109

Phone: (571) 270-5661

Lauren.Roncoroni@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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 5/27/2019 FOR U.S. APPLICATION SERIAL NO. 88059009

 

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 5/27/2019 (or sooner if specified in the Office action).  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.  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 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.