NOTE TO THE FILE
SERIAL NUMBER: 88208538
DATE: 02/27/2019
NAME: kmoninghoff
NOTE:
Searched:
Lexis/Nexis
OneLook
Wikipedia
Acronym Finder Protest evidence reviewed
Other:Checked:
Geographic significance
Surname
Translation
ID with ID/CLASS mailboxChecked list of approved Canadian attorneys and agents
Discussed file with
Attorney/Applicant via:
phone Left message with
X email Attorney/ApplicantRequested Law Library search X Issued Examiner’s Amendment
for: and entered changes in TRADEUPSPRINT DO NOT PRINT Added design code in TRADEUPS
Description of the mark
Translation statement Re-imaged standard character
drawing
Negative translation statement
Consent of living individual Contacted TM MADRID ID/CLASS
about misclassified definite ID
Changed TRADEUPS to:X OTHER:
From: Tim Wang [mailto:twang@nilawfirm.com]
Sent: Wednesday, February 27, 2019 5:20 PM
To: Moninghoff, Kim <Kim.Moninghoff@USPTO.GOV>
Cc: tim2074@yahoo.com; Krystal Gibbens <kgibbens@nilawfirm.com>
Subject: RE: Midea America Corp. Trademark Applications
Dear Ms. Moninghoff,
We appreciate the update.
Best,
Tim
From: Moninghoff, Kim
Sent: Wednesday, February 27, 2019 5:14 PM
To: 'Tim Wang' <twang@nilawfirm.com>
Cc: 'tim2074@yahoo.com' <tim2074@yahoo.com>; 'Krystal Gibbens' <kgibbens@nilawfirm.com>
Subject: RE: Midea America Corp. Trademark Applications
Mr. Wang,
I should have the EA/PAs for the Class 11 applications out to you shortly. Upon further review, I decided not to cite Registration No. 4467842. The differences in the genie designs should be enough to distinguish these marks.
Kim Teresa Moninghoff
Trademark Examining Attorney
Law Office 113
Phone: 571-272-4738
Fax: 571-273-4738
All informal e-mail communications relevant to this application will be placed in the official application record.
From: Moninghoff, Kim
Sent: Wednesday, February 27, 2019 10:57 AM
To: 'Tim Wang' <twang@nilawfirm.com>
Cc: tim2074@yahoo.com; Krystal Gibbens <kgibbens@nilawfirm.com>
Subject: RE: Midea America Corp. Trademark Applications
Thank you. I will take care of all of these today.
Please note that for the Class 11 applications, I will need to issue a refusal as to the existing registrations. You would then be able to file a response requesting suspension.
Also, please note that since I sent my original email, Registration No. 4073600 has been cancelled because the registrant did not response to a post-registration Office action. This will not impact the goods included in the refusal because that registrant also owns No. 5378593, included in the list below.
Kim Teresa Moninghoff
Trademark Examining Attorney
Law Office 113
Phone: 571-272-4738
Fax: 571-273-4738
All informal e-mail communications relevant to this application will be placed in the official application record.
From: Tim Wang [mailto:twang@nilawfirm.com]
Sent: Wednesday, February 27, 2019 10:48 AM
To: Moninghoff, Kim <Kim.Moninghoff@USPTO.GOV>
Cc: tim2074@yahoo.com; Krystal Gibbens <kgibbens@nilawfirm.com>
Subject: RE: Midea America Corp. Trademark Applications
Dear Ms. Moninghoff,
Please see my client’s response highlighted in bold below. Please let me now if you have any questions. We really appreciate your assistance with this matter.
(1) Mark Description
Accepted to be amended for the mark descriptions as following:
- The mark consists of stylized cartoon genie within a circle.
- The mark consists of the stylized wording “GENNIE” with a stylized cartoon genie on the right.
- The mark consists of the stylized wording “COUNTER GENNIE” with a stylized cartoon genie on the right.
(2) Disclaimer
Accepted to claim a statement as following:
No claim is made to the exclusive right to use “COUNTER” apart from the mark as shown.
(3) Identification
a) For the good “Electric milk making machine for household purposes”， please DELETE it from the list.
b) For the good “Disinfectant cupboards”, please note that our client agreed on the Examiner's suggestion and amend the good as “Disinfectant cupboards, namely, disinfecting ultraviolet lamps housed in a cupboard for disinfecting objects placed therein”
(4) Refusals and potential refusals
a) For the Class 7 goods, please DELETE the “vacuum cleaners”;
b) For the Class 11 goods, please request suspension to wait and see what happens with all three marks.
Best regards,
Tim
From: Moninghoff, Kim [mailto:Kim.Moninghoff@USPTO.GOV]
Sent: Friday, February 22, 2019 3:37 PM
To: Tim Wang <twang@nilawfirm.com>
Cc: tim2074@yahoo.com; Krystal Gibbens <kgibbens@nilawfirm.com>
Subject: Midea America Corp. Trademark Applications
Mr. Wang,
I’ve been assigned to review the following six trademark applications that you filed for this applicant:
No. 88201889 genie design (Docket #ACIP0624)
No. 88201893 GENNIE and design (Docket #ACIP0623)
No. 88201899 COUNTER GENNIE and design (Docket #ACIP0622)
No. 88208517 COUNTER GENNIE and design (Docket #ACIP0638)
No. 88208538 GENNIE and design (Docket #ACIP0639)
No. 88208553 genie design (Docket #ACIP0640)
These applications have issues that we may be able to resolve by Examiner’s Amendment (EA) or simplify with combined Examiner’s Amendment/Priority Actions (EA/PA).
(1) Mark Description. The mark descriptions need to be amended to clarify that the figure in the mark is a genie. The following mark descriptions would address this issue:
The mark consists of stylized cartoon genie within a circle.
The mark consists of the stylized wording “GENNIE” with a stylized cartoon genie on the right.
The mark consists of the stylized wording “COUNTER GENNIE” with a stylized cartoon genie on the right.
(2) Disclaimer. For the two marks that include the term COUNTER, I need a disclaimer of that term because it describes a use of the goods. The disclaimer statement would read as follows:
No claim is made to the exclusive right to use “COUNTER” apart from the mark as shown.
(3) Identification. Each identification needs an amendment. For the Class 7 goods, the wording “Electric milk making machine for household purposes” is indefinite because milk is made by cows, not machines. It looks like this wording may be intended to refer to nut milk makers, which are essentially food grinders. If so, the identification may be amended accordingly. For Class 11, the wording “Disinfectant cupboards” is too broad. If these goods consist of a UV lamp in a cupboard for disinfecting items, this must be specified, but they are properly classified in Class 11.
(4) Section 2(d) refusals and potential refusals. Because of the design element, consumers will view the mark wording as the equivalent of the term GENIE. Similarly, consumers would view the design only mark as a genie. There are some registered and pending marks that consist of the term GENIE alone or combined with other wording for similar goods/services.
For the Class 7 goods, the following marks conflict with the applicant’s vacuum cleaners:
No. 4083995 GENIE for Floor cleaning machines in 7.
No. 4937326 HARD FLOOR GENIE for Vacuum cleaner attachments for household purposes, namely, wands with nozzles and removable pads for floor cleaning and floor polishing in 7.
No. 5039396 HOSE GENIE for INTEGRATED HOSE AND VALVE ASSEMBLY FOR USE WITH IN-WALL VACUUM CLEANER SYSTEMS in 7.
Therefore, I can either delete the vacuum cleaners, or issue a Section 2(d) refusal limited to those goods. If you want me to issue the refusal, I would still need your consent to amend the milk making machines.
For the design only mark, the amended identification to address both the identification issue and avoid the refusal would read as follows:
Electrically-powered kitchen appliance for dicing, mincing, slicing and chopping food; Crushers for kitchen use, electric; Kitchen grinders, electric; Dishwashers; Electric mixers for household purposes; Kitchen machines, namely, electric standing mixers; Electric mixers, namely, kitchen machines; Fruit presses, electric, for household purposes; Electric juicers; Dishwashers for household purposes; Dishwasher racks being parts of a dishwasher; Electric nut milk making machine for household purposes, namely, electric food grinders; Electric coffee grinders; Dish washing machines for industrial purposes; Washing machines for clothes; Wet-cleaning washing machines; Washing machines for household purposes; Electric washing machines for industrial purposes, in Class 7.
For the other two, the amended identification to address both the identification issue and avoid the refusal would read as follows:
Electrically-powered kitchen appliance for dicing, mincing, slicing and chopping food; Crushers for kitchen use, electric; Kitchen grinders, electric; Dishwashers; Electric mixers; Kitchen machines, namely, electric standing mixers; Electric mixers, namely, kitchen machines; Fruit presses, electric, for household purposes; Electric juicers; Dishwashers for household purposes; Dishwasher racks being parts of a dishwasher; Electric nut milk making machine for household purposes, namely, electric food grinders; Electric coffee grinders; Dish washing machines for industrial purposes; Washing machines for clothes; Wet-cleaning washing machines; Washing machines for household purposes; Electric washing machines for industrial purposes, in Class 7.
For the Class 11 goods, there are pending and registered marks that conflict with the varying cooking devices/appliances, air conditioning and heating devices, and water purifying/sterilizing devices. The relevant marks are the following:
No. 87167405 ROTIGENIE for Automatic Tortilla, Roti or flat bread making electric appliances in 11
No. 79227462 GENIE, Multi-purpose, computer-controlled electric countertop food preparation apparatus for cooking, baking, broiling, roasting, toasting, searing, browning, barbecuing and grilling food, in Class 11.
No. 4073600 GENIE AIR CONDITIONING & HEATING for air conditioners in 11, and controllers in 9;
No. 5378593 GENIE AIRE for air conditioners in 11.
No. 4467842 GENIE COMPUTERIZED WATER CONDITIONER MAKES HARD WATER PROBLEMS DISAPPEAR for water conditioners in 11.
No. 5598921 SUPER-GENIE for water purification units.
No. 3679595 EGGGENIE for egg cookers and food steamers, in 11
To avoid a refusal or potential refusal, the applicant would need to limit the goods to the following:
Lamps; Refrigerators; Dish disinfectant apparatus for industrial purposes; Air sterilizing apparatus; Disinfectant cupboards, namely, disinfecting ultraviolet lamps housed in a cupboard for disinfecting objects placed therein, in Class 11.
The refusal/potential refusal as to the cooking devices/appliances involves the two pending applications, and No. 3679595 for which maintenance documents are due by September 9, 2019, and which have not yet been filed. So, I can limit the goods to the following and issue a partial refusal as to the highlighted goods:
Electric soymilk makers; Cooking stoves; Electric rice cookers; Gas cookers; Electric pressure cookers; Apparatus for cooking, namely, cooktops; Cooking stoves; Electric cooking pots for household purposes; Cooking ranges; Microwave ovens; Cooking ovens; Electric cookware, namely, roasters; Electric roasters; Gas burners; Coffee roasters; Fruit roasters; Multi-purpose, electric countertop food preparation apparatus for cooking, baking, broiling, roasting, toasting, searing, browning, barbecuing and grilling food; Food steamers, electric; Electric toasters; Electric toasters for household purposes; Microwave ovens, namely, cooking apparatus; Electrically-heated mugs;; Electric hot plates; Plate warmers; Microwave ovens for industrial purposes; Lamps; Refrigerators; Extractor hoods for kitchens; Dish disinfectant apparatus for industrial purposes; Air sterilizing apparatus; Disinfectant cupboards, namely, disinfecting ultraviolet lamps housed in a cupboard for disinfecting objects placed therein, in Class 11.
The action would include an advisory regarding the two pending applications, and you would then be able to file a response with any argument/evidence and request suspension based on those applications to wait and see what happens with all three marks. You can also consent to the amendment to the disinfectant cupboards, and retain all of the goods, and I would then issue a partial refusal as to all of the registered marks.
You can provide your consent to (1) and (2) above, and to any of the options discussed in (4) by reply email or phone. I will then issue EAs or EA/PAs as appropriate. If you have any questions, please let me know.
If I don’t hear back from you by the end of the day Wednesday (2/27), I will issue Office actions with the above refusals and requirements.
As a reminder, I cannot accept argument/evidence by phone or email so you would need to wait until I issue the refusals and submit any argument/evidence in a formal response. Thank you.
Kim Teresa Moninghoff
Trademark Examining Attorney
Law Office 113
Phone: 571-272-4738
Fax: 571-273-4738
All informal e-mail communications relevant to this application will be placed in the official application record.