To: | Atlantis Technologies (cxltrademarks@wolfgreenfield.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88179779 - RDI - A11412000000 |
Sent: | 2/12/2019 7:59:44 AM |
Sent As: | ECOM113@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88179779
MARK: RDI
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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: Atlantis Technologies
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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: 2/12/2019
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.
Search Results—No Conflicting Marks Found
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).
Section 2(e)(1) Refusal—Mark is Merely Descriptive
Registration is refused because the applied-for mark merely describes a feature or characteristic of the applicant’s goods and services. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.
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., DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (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)).
The applicant has applied to register the mark RDI for use on and in connection with “Water and wastewater treatment and desalination systems, consisting primarily of deionization filtration, capacitive deionization, capacitors, and membranes for use in the desalination of water for industrial, municipal, and commercial uses; Design, installation, operation, and maintenance of water desalination systems.”
RDI is an acronym for “radial deionization,” a particular method of desalinating water. As shown by the applicant’s specimen, the identified water treatment and desalination systems utilize RDI to deionize or desalinate water. As such, RDI describes a key feature or characteristic of the system, and is thus merely descriptive. RDI is similarly descriptive of the identified design, installation, operation, and maintenance services, as these services also pertain to radial deionization.
Although RDI appears to be a method or technology developed by the applicant, this fact is not sufficient to obviate the finding that the mark is merely descriptive. The examining attorney references the attached excerpt of a patent application for the goods from freepatentsonline.com, which application makes repeated descriptive use of “RDI device” and “RDI system” in reference to the goods, indicating that “RDI device” and “RDI system” are in fact the descriptive names for the goods. The examining attorney additionally references the attached Internet evidence showing that RDI is also used descriptively by third parties in reference to a particular method of capacitive deionization. For example, the attached article from crdesalination.weebly.com states that “[c]ertain desalination plants, such as the Radial Deionization (RDI) system, are able to take the water used for fracking and clean it.” Thus, while RDI identifies a method of deionization originally developed by the applicant, the fact that an applicant may be the first or only user of a merely descriptive designation does not necessarily render a word or term incongruous or distinctive. In the present case, the evidence shows that RDI is merely descriptive, and is used by third parties to identify a particular method of desalination. See In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1514 (TTAB 2016); In re Phoseon Tech., Inc., 103 USPQ2d 1822, 1826 (TTAB 2012); TMEP §1209.03(c).
Determining the descriptiveness of a mark is done in relation to an applicant’s goods and/or services, the context in which the mark is being used, and the possible significance the mark would have to the average purchaser because of the manner of its use or intended use. See In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (citing In re Bayer Aktiengesellschaft, 488 F.3d 960, 963-64, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)); TMEP §1209.01(b). Descriptiveness of a mark is not considered in the abstract. In re Bayer Aktiengesellschaft, 488 F.3d at 963-64, 82 USPQ2d at 1831. The attached and referenced evidence shows that, within the applicant’s industry and in relation to the applicant’s water treatment systems and related services, RDI is generally known as an acronym for “radial deionization,” a method of deionizing water. Thus, prospective purchasers of the goods would understand the proposed mark RDI merely as indicating that the applicant’s water treatment goods and services utilize radial deionization, and would not perceive this term as a source identifier for the goods or services.
For the reasons discussed above, registration of the mark is refused under Trademark Act Section 2(e)(1).
Although registration of the mark has been refused, the applicant may present arguments against the refusal. If the applicant does respond to the Section 2(e)(1) refusal, the applicant must also respond to the following:
SPECIMENS UNACCEPTABLE
Registration is refused because the specimens do not show proper use of the applied-for mark in commerce in connection with of the goods and services specified in the application. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); In re Keep A Breast Found., 123 USPQ2d 1869, 1876-79 (TTAB 2017); In re Graystone Consulting Assocs., Inc., 115 USPQ2d 2035, 2037-38 (TTAB 2015); TMEP §§904, 904.07(a), 1301.04(d), (g)(i).
Specimen is Advertising Material for Goods
The specimens are pages from the applicant’s website that provide information about the goods. To be acceptable, a specimen of a webpage display must include (1) a picture or sufficient textual description of applicant’s goods that (2) shows the mark associated with the goods, and (3) a way of ordering the goods (e.g., a “shop online” or “shopping cart” button or link, an order form, or a telephone number for placing orders). TMEP §904.03(i); see In re Sones, 590 F.3d 1282, 1286-89, 93 USPQ2d 1118, 1122-24 (Fed. Cir. 2009); In re Azteca Sys., Inc., 102 USPQ2d 1955, 1957-58 (TTAB 2012). If applicant’s specimen includes a telephone number, internet address, and/or mailing address that appears only with corporate contact information, the specimen may not show sufficient means for ordering the goods. See In re Genitope Corp., 78 USPQ2d 1819, 1822 (TTAB 2006); TMEP §904.03(i)(C)(2). In that circumstance, the specimen may also need to include instructions on how to place an order or an offer to accept orders. See In re Quantum Foods, Inc., 94 USPQ2d 1375, 1379 (TTAB 2010); TMEP §904.03(i)(C)(2).
In this case, the specimen does not include any way of ordering the goods, such as a “shopping cart” or “buy now” function. See In re Sones, 590 F.3d at 1286-89, 93 USPQ2d at 1122-24; In re Azteca Sys., Inc., 102 USPQ2d at 1957; TMEP §§904.03(i) et seq. Without this feature, the specimen is mere advertising material, which is generally not acceptable as a specimen for showing use in commerce for goods. See In re Kohr Bros., 121 USPQ2d 1793, 1794 (TTAB 2017) (quoting In re Quantum Foods, Inc., 94 USPQ2d at 1379); In re Genitope Corp., 78 USPQ2d at 1822; TMEP §904.04(b). While the specimens do include a telephone number and email address, this is not sufficient, as there is no indication or instruction for how to order the goods using that contact information.
Specimens Do Not Show Use With Identified Services
The specimens are unacceptable for the services listed in the identification because they do not show the applied-for mark in use in commerce in connection with any of the services specified in the application. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a).
The services are “design, installation, operation, and maintenance of water desalination systems.” The specimen submission is comprised of webpages providing information about the identified systems. However, the specimens make no reference to any of the listed services. Though one page of the specimens makes reference to maintenance, this section indicates only that the goods require reduced maintenance, which is not sufficient, as it does not specify any maintenance services provided by the applicant.
Specimens consisting of advertising or promotional materials must show a direct association between the mark and the services for which registration is sought. In re WAY Media, Inc., 118 USPQ2d 1697, 1698 (TTAB 2016) (quoting In re Universal Oil Prods. Co., 476 F.2d 653, 655, 177 USPQ 456, 457 (C.C.P.A. 1973)); TMEP §1301.04(f)(ii). To show this direct association, the specimen must contain an explicit reference to the services, in addition to the mark being used on the specimen to identify the service and its source. In re WAY Media, Inc., 118 USPQ2d at 1698 (quoting In re Osmotica Holdings, Corp., 95 USPQ2d 1666, 1668 (TTAB 2010)); TMEP §1301.04(f)(ii). While the exact nature of the services does not need to be specified in the specimen, there must be something which creates in the mind of the purchaser an association between the mark and the service. In re Adair, 45 USPQ2d 1211, 1215 (TTAB 1997) (quoting In re Johnson Controls Inc., 33 USPQ2d 1318, 1320 (TTAB 1994)). Here, the specimen makes no reference at all to any design, installation, operation, or maintenance services provided by the applicant. Thus, the specimen clearly fails to show an association between the mark and the identified services.
Specimen Requirements and Response Options
An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods identified in the application or amendment to allege use. 15 U.S.C. §1051(a)(1); 37 C.F.R. §2.56(a).
Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, and displays associated with the actual goods at their point of sale. See TMEP §§904.03 et seq. As stated above, webpage displays may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods. TMEP §904.03(i). Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and webpages that show the mark used in the actual sale, rendering, or advertising of the services. See TMEP §1301.04(a), (h)(iv)(C).
Applicant may respond to this refusal by satisfying one of the following:
(1) Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the goods/services identified in the application or amendment to allege use. A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.” The substitute specimen cannot be accepted without this statement.
(2) Amend the filing basis to intent to use under Section 1(b), for which no specimen is required. This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.
For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to the Specimen webpage.
Identification of Goods/Services
The identification of goods and services is unacceptable because it includes indefinite wording and lists goods and services that are classified in more than one international class. TMEP §1402.01.
First, the wording “Water and wastewater treatment and desalination systems, consisting primarily of deionization filtration, capacitive deionization, capacitors, and membranes for use in the desalination of water for industrial, municipal, and commercial uses” is unacceptable because an identification for systems must list the component parts of the system. Here, the system is noted as being primarily comprised, in part, of “deionization filtration, capacitive deionization,” which wording appears to identify a method or process of filtration, rather than an actual item that is part of the system. The applicant must amend this portion of the identification to specify the component parts of the systems.
In addition, the wording “Design, installation, operation, and maintenance of water desalination systems” in the identification is unacceptable because it identifies services classified in multiple classes, as specified in the identification suggestion below. The applicant is further advised that “design” services refer to the activity of custom design—design to the custom and specification of others, not merely design of the applicant’s own systems that are then sold as a system. Similarly, “operation” refers to the operation of a system on behalf of third parties. Design or operation not provided on the order of or for the benefit of third parties are activities that are not registrable services. In order to be a registrable service, a service must be performed primarily for the benefit of someone other than the applicant, and be sufficiently separate and distinct from the applicant’s principal activity. See TMEP §1301.01(a); see In re Dr Pepper Co., 836 F.2d 508, 509-510, 5 USPQ2d 1207, 1208-1209 (Fed. Cir. 1987); In re Canadian Pac. Ltd., 754 F.2d 992, 994-95, 224 USPQ 971, 973 (Fed. Cir. 1985).
The applicant must amend the application to adopt an acceptable identification of goods and services. 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.
The applicant may amend to adopt one or more of the following, if accurate:
INTERNATIONAL CLASS 11: Water and wastewater treatment and desalination systems consisting primarily of apparatus for deionization filtration and capacitive deionization, membranes, and capacitors, for use in the desalination of water for industrial, municipal, and commercial uses.
INTERNATIONAL CLASS 37: Installation and maintenance of water desalination systems.
INTERNATIONAL CLASS 40: Water desalination services in the nature of operating water desalination systems for others.
INTERNATIONAL CLASS 42: Design of water desalination systems.
Multiple-Class Application: Advisory and Requirements
The application identifies goods and services that may be classified in at least 3 classes; however, applicant submitted a fee sufficient for only 1 class. In a multiple-class application, a fee for each class is required. 37 C.F.R. §2.86(a)(2), (b)(2); TMEP §§810.01, 1403.01.
Therefore, the applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).
(2) Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule).
(3) Submit verified dates of first use of the mark anywhere and in commerce for each international class. See more information about verified dates of use.
(4) Submit a specimen for each international class. As discussed above, the current specimen is not acceptable for any international class.
(5) Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.” See more information about verification.
See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class. See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a). See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.
/Kimberly Frye/
Examining Attorney
Law Office 113
(p)571-272-9430
(f) 571-273-9430
(e) kimberly.frye@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.