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 09/20/2020)

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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 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88059009 SMOK(Standard Characters, see http://uspto.report/TM/88059009/mark.png) has been amended as follows:

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

The Examining Attorney has issued a DESCRIPTIVENESS refusal of applicant’s mark in connection with applicant’s goods.  The Examining attorney argues that the mark SMOK is a novel spelling of the wording SMOKE, which means “the process of smoking something, especially a cigarette.”

 

The Examining Attorney argues that applicant’s mark is descriptive in connection with its goods because they

 

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.

 

As a preliminary matter, applicant amends its goods and services as follows:

 

CLASS 009: Chargers for electronic cigarettes; Batteries for electronic cigarettes; Battery chargers for electronic cigarettes; Battery covers in the nature of battery cases for electronic cigarettes.

CLASS 034: 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.

CLASS 035:  On-line retail store services featuring electronic cigarettes, oral vaporizers for smokers, smokers articles and accessories for the foregoing.

The determination of whether a mark is merely descriptive must be made in relation to the goods or services for which registration is sought. In re Chamber of Commerce, 675 F.3d at 1300, 102 USPQ2d at 1219; In re Bayer, 488 F.3d at 964, 82 USPQ2d at 1831. Therefore, a determination of descriptiveness must be made based on the current identification and not that of July 31, 2018.

 

With regard to the current identification, descriptiveness must be based on the context in which the mark is used or intended to be used in connection with those goods/services, and the possible significance that the mark would have to the average purchaser of the goods or services in the marketplace. See In re Chamber of Commerce, 675 F.3d at 1300, 102 USPQ2d at 1219; In re Bayer, 488 F.3d at 964, 82 USPQ2d at 1831; In re Nett Designs, Inc., 236 F.3d 1339, 1342 (Fed. Cir. 2001); In re Omaha Nat’l Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215 (C.C.P.A. 1978); In re Datapipe, Inc., 111 USPQ2d 1330 (TTAB 2014).

 

The significance of the term is from the point of view of the consumers of the particular goods or services identified in the application. In re MCO Properties Inc., 38 USPQ2d 1154 (TTAB 1995) (FOUNTAIN HILLS held primarily geographically descriptive of real estate development services rendered in Fountain Hills, Arizona, where the record showed that Fountain Hills was the name of the town where the applicant was located and rendered its services, and that the purchasers who came in contact with the mark would associate that place with the services).

 

Applicant has chosen the wording “Oral vaporizers for smokers; Smokers' oral vaporizer refill cartridges sold empty” because these are the terms required by the current U.S. Identification Manual.  However, it does not mean that the average consumer would understand “SMOK” or “SMOKE” to describe a feature or purpose of applicant’s goods.

 

From the point of view of prospective consumers, the wording “SMOK” does not describe a feature of the goods, but instead, suggests a desired end result. 

 

CONSUMER’S POINT OF VIEW

 

Numerous publications support the conclusion that prospective consumers view e-cigarettes or oral vaporizers as an “alternative” to smoking, and indeed, as a means to “stop smoking.”  Indeed, in lieu of “smoking,” prospective consumers view applicant’s goods as a means of “vaping.”  Instead of applicant’s goods creating “smoke,” applicant’s goods create “vapors.”

Below are examples:

MEDICAL NEWS TODAY (printed 10/17/2019) states “Are e-cigarettes a safe alternative to smoking?”; “The safety and long term health effects of using electronic cigarettes or other vaping products are still not well known.”  See attached.

CANCER.NET (printed 11/19/2019) states “Many people may turn to e-cigarettes as a way to try to stop smoking, and there is evidence that they can be effective for smoking cessation.” See attached.

SMOKEFREE.GOV (printed 11/19/2019) states “Can e-cigarettees help people quit smoking?” See attached.

CDC CENTER FOR DISEASE CONTROL AND PREVENTION (printed 11/19/19): “E-cigarettes have the potential benefit adult smokers who are not pregnant if used as a complete substitute for regular cigarettes and other smoked tobacco products” See attached.

CNN HEALTH (printed 11/19/2019): “Vaping makes teens more likely to try cigarettes, but does not increase the odds that they’ll become smokers…” See attached.

WIKIPEDIA (printed 11/19/2019): “simulates smoking… but without combusting tobacco. Using an e-cigarette is known as “vaping” and the user is referred to as a “vaper.” Instead of cigarette smoke, the user inhales an aerosol, commony called vapor.” See attached.

Based on the above-evidence, the mark “SMOK” (even interpreted as “SMOKE”| would be understood by prospective consumers as conveying a desired end result of applicant’s goods, i.e., to stop or avoid smoking.  See The Fleetwood Co. v. the Mitchum Co., 139 USPQ 281 (CCPA 1964)(FAYD suggested a result of using the skin cream); In re Nalco Chemical Co., 228 USPQ 972 (TTAB 1986)(VERI-CLEAN allowed for chemical anti-fouling agent because it was "[s]uggestive of the desired end result of the use of applicant's additives, but [did] not serve to describe the goods themselves").

 

It would not be understood to describe a feature, characteristic, or purpose of applicant’s goods because prospective consumers recognize that applicant’s goods are designed for “vaping” while traditional cigarettes are designed for “smoking.” 

 

CONCLUSION

 

In sum, based on the evidence presented, applicant’s mark is not merely descriptive of a feature, characteristic, or purpose of applicant’s goods.  It is instead, suggestive of a desired end result.

EVIDENCE
Evidence in the nature of internet articles has been attached.
Original PDF file:
evi_371761154-20191127090938429522_._Smok_evid1.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_371761154-20191127090938429522_._Smok_evid2.pdf
Converted PDF file(s) ( 5 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Original PDF file:
evi_371761154-20191127090938429522_._Smok_evid3.pdf
Converted PDF file(s) ( 5 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Original PDF file:
evi_371761154-20191127090938429522_._Smok_evid4.pdf
Converted PDF file(s) ( 8 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Original PDF file:
evi_371761154-20191127090938429522_._Smok_evid5.pdf
Converted PDF file(s) ( 5 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Original PDF file:
evi_371761154-20191127090938429522_._Smok_evid6.pdf
Converted PDF file(s) ( 3 pages)
Evidence-1
Evidence-2
Evidence-3
Original PDF file:
evi_371761154-20191127090938429522_._Smok_evid7.pdf
Converted PDF file(s) ( 11 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Chargers for electronic cigarettes; Batteries for electronic cigarettes; Battery chargers for electronic cigarettes; Battery covers in the nature of battery cases for electronic cigarettes
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 05/12/2011 and first used in commerce at least as early as 06/26/2013 , and is now in use in such commerce.

Proposed: Class 009 for Chargers for electronic cigarettes; Batteries for electronic cigarettes; Battery chargers for electronic cigarettes; Battery covers in the nature of battery cases for electronic cigarettes
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 05/12/2011 and first used in commerce at least as early as 06/26/2013 , and is now in use in such commerce.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 034 for 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
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 05/12/2011 and first used in commerce at least as early as 06/26/2013 , and is now in use in such commerce.

Proposed: Class 034 for 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
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 05/12/2011 and first used in commerce at least as early as 06/26/2013 , and is now in use in such commerce.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for On-line retail store services featuring electronic cigarettes, oral vaporizers for smokers, smokers articles and accessories for the foregoing
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 08/28/2016 and first used in commerce at least as early as 08/28/2016 , and is now in use in such commerce.

Proposed:
Tracked Text Description: On-line retail store services featuring electronic cigarettes, oral vaporizers for smokers, smokers articles and accessories for the foregoing; On-line retail store services featuring electronic cigarettes, oral vaporizers for smokersClass 035 for On-line retail store services featuring electronic cigarettes, oral vaporizers for smokers
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 08/28/2016 and first used in commerce at least as early as 08/28/2016 , and is now in use in such commerce.
ADDITIONAL STATEMENTS
Miscellaneous Statement
In the alternative, applicant submits evidence of acquired distinctiveness in the form of a declaration and supporting exhibits.

Original PDF file:
mis-371761154-20191127090938429522_._SMOK_signed_Declaration.pdf
Converted PDF file(s) ( 2 pages)
Miscellaneous File1
Miscellaneous File2
Original Specimen:
APPLICANT-SUPPLIED FILE (SOUND/MOTION)
Original PDF file:
mis-371761154-20191127090938429522_._SMOK_exhibit_I.pdf
Converted PDF file(s) ( 9 pages)
Miscellaneous File1
Miscellaneous File2
Miscellaneous File3
Miscellaneous File4
Miscellaneous File5
Miscellaneous File6
Miscellaneous File7
Miscellaneous File8
Miscellaneous File9
Original PDF file:
mis-371761154-20191127090938429522_._SMOK_exhibit_II.pdf
Converted PDF file(s) ( 7 pages)
Miscellaneous File1
Miscellaneous File2
Miscellaneous File3
Miscellaneous File4
Miscellaneous File5
Miscellaneous File6
Miscellaneous File7
Original PDF file:
mis-371761154-20191127090938429522_._SMOK_Exhibit_III.pdf
Converted PDF file(s) ( 23 pages)
Miscellaneous File1
Miscellaneous File2
Miscellaneous File3
Miscellaneous File4
Miscellaneous File5
Miscellaneous File6
Miscellaneous File7
Miscellaneous File8
Miscellaneous File9
Miscellaneous File10
Miscellaneous File11
Miscellaneous File12
Miscellaneous File13
Miscellaneous File14
Miscellaneous File15
Miscellaneous File16
Miscellaneous File17
Miscellaneous File18
Miscellaneous File19
Miscellaneous File20
Miscellaneous File21
Miscellaneous File22
Miscellaneous File23
Original PDF file:
mis-371761154-20191127090938429522_._Smok_IV.pdf
Converted PDF file(s) ( 34 pages)
Miscellaneous File1
Miscellaneous File2
Miscellaneous File3
Miscellaneous File4
Miscellaneous File5
Miscellaneous File6
Miscellaneous File7
Miscellaneous File8
Miscellaneous File9
Miscellaneous File10
Miscellaneous File11
Miscellaneous File12
Miscellaneous File13
Miscellaneous File14
Miscellaneous File15
Miscellaneous File16
Miscellaneous File17
Miscellaneous File18
Miscellaneous File19
Miscellaneous File20
Miscellaneous File21
Miscellaneous File22
Miscellaneous File23
Miscellaneous File24
Miscellaneous File25
Miscellaneous File26
Miscellaneous File27
Miscellaneous File28
Miscellaneous File29
Miscellaneous File30
Miscellaneous File31
Miscellaneous File32
Miscellaneous File33
Miscellaneous File34
Original PDF file:
mis-371761154-20191127090938429522_._Smok_Exhibit_V.pdf
Converted PDF file(s) ( 5 pages)
Miscellaneous File1
Miscellaneous File2
Miscellaneous File3
Miscellaneous File4
Miscellaneous File5
Original PDF file:
mis-371761154-20191127090938429522_._Smok_exhibit_VI.pdf
Converted PDF file(s) ( 13 pages)
Miscellaneous File1
Miscellaneous File2
Miscellaneous File3
Miscellaneous File4
Miscellaneous File5
Miscellaneous File6
Miscellaneous File7
Miscellaneous File8
Miscellaneous File9
Miscellaneous File10
Miscellaneous File11
Miscellaneous File12
Miscellaneous File13

SIGNATURE(S)
Response Signature
Signature: /john alumit/     Date: 11/27/2019
Signatory's Name: John Alumit
Signatory's Position: Attorney of Record, California Bar

Signatory's Phone Number: 8182444861

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); 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.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 88059009
Internet Transmission Date: Wed Nov 27 09:55:13 EST 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.X-20191127095513332
369-88059009-70060ef914d5794df24cf77fd57
7ce352eb6dff262d5a0b7bd7b913c0243435e-N/
A-N/A-20191127090938429522