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. 88221332 EMOP(Standard Characters, see http://uspto.report/TM/88221332/mark.png) has been amended as follows:

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

The Examining Attorney has refused registration under Trademark Act Section 2(e)(1) of Applicant's Mark in Class 7 because of a finding that the applied-for mark EMOP merely describes a characteristic, feature, or function of applicant?s goods. A. EMOP is Not Descriptive of Applicant?s Class 7 Goods While it is true that the letter ?e? used as a prefix has become commonly recognized as a designation for goods that are electronic in nature or are sold or provided electronically, this is not actually the case with Applicant's EMOP product. The "e" in Applicant's Mark actually signifies "electrolyzed," rather than "electronic." Under Applicant's Mark, Applicant intends to sell mops that use electrolyzed water to clean. In order to create the electrolyzed water solution, water and salt will cause a chemical reaction to occur that creates electrolyzed water. The electrolyzed water will then be used with Applicant's mop to clean. Section 2(e) of the Lanham Act mandates that a mark be refused registration on the Principal Register if the mark, ?when used on or in connection with the goods of the applicant, is merely descriptive of them.? 15 U.S.C. ? 1052(e). ??Merely descriptive? means only descriptive or nothing more than descriptive.? Hercules Powder Co. v. Newton, 266 F. 169, 172 (2d Cir. 1920) (emphasis added); In re Intelligent Medical Systems, Inc., 5 USPQ2d 1674, 1675 (TTAB 1987) (holding INTELLIGENT MEDICAL SYSTEMS not merely descriptive of electronic thermometers, although a specific attribute of the goods were their ?intelligence? and the goods were for ?medical use?). A mark is considered merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant goods. In re MetPath Inc., 223 USPQ 88 (TTAB 1984). However, ?a designation does not have to be devoid of all meaning in relation to the goods or services to be registrable.? TMEP ? 1209.01(a). In this instance, the letter ?e? in Applicant?s Mark does not provide an indication of what Applicant?s goods are. A consumer would not readily be able to deduce from seeing the mark EMOP that Applicant?s goods utilize electrolyzed water, without having further information about the product. Accordingly, like INTELLIGENT MEDICAL SYSTEMS, Applicant?s Mark is not only descriptive or nothing more than descriptive of Applicant?s goods. B. The Term EMOP is Suggestive for Applicant's Class 7 Goods Because the consumer must rely on imagination, thought, and/or additional information to associate the term EMOP with Applicant's goods, EMOP is suggestive rather than descriptive of Applicant?s goods, and thus Applicant?s Mark should be registrable on the Principal Register in Class 7. Suggestive marks, which are registrable without proof of acquired distinctiveness, ?are those which require imagination, thought or perception to reach a conclusion as to the nature of the goods or services.? TMEP ? 1209.01(a). Thus, for example, the Board has held THE LONG ONE not merely descriptive of bread, In re Gourmet Bakers, Inc., 173 USPQ 565 (TTAB 1972), PEST PRUF not merely descriptive of animal shampoo with insecticide, In re Aid Laboratories, Inc., 221 USPQ 1215 (TTAB 1984), and COLOR CARE not merely descriptive of laundry bleach. In re Morton-Norwich Products, Inc., 209 USPQ 791 (TTAB 1981). Further, ?[A] suggestive mark may shed some light upon the characteristics of the goods.? Erma Corp. v. Superclips Ltd., 218 USPQ 124 (E.D. Mich. 1983). The PTO has recognized that, although the distinction between a mark that is merely descriptive and one that is suggestive is not always easy to delineate, the word ?merely? has been construed to indicate that, if the mark does not tell the potential customer only what the goods are, their function, characteristics or use of ingredients, then the mark is not ?merely descriptive.? In re Intelligent Medical Systems, Inc., 5 USPQ2d at 1675 (holding INTELLIGENT MEDICAL SYSTEMS not merely descriptive of electronic thermometers, although a specific attribute of the goods was their ?intelligence? and the goods were for ?medical use?). Like the marks cited above, while the term EMOP may shed some light upon some characteristic of Applicant?s goods (e.g., that Applicant?s product is a mop) the term does not only inform the purchasing public what Applicant's goods are. In regard to a similar mark, the Board stated in In re TMS Corp. of the Americas, 200 USPQ 57, 59 (TTAB 1978): It is our opinion that because the mark ?THE MONEY SERVICE? is composed of commonly used words of the English language, it suggests a number of things, but falls short of describing Applicant?s services in any one degree of particularity. To effect a readily understood connection between applicant?s mark and its services requires the actual or prospective customer to use thought, imagination and perhaps exercise in extrapolation. In short, what we are saying is that applicant?s mark ?THE MONEY SERVICE? does not directly or indirectly convey any vital purposes, characteristics or qualities of Applicant?s services. Thus, the mark is suggestive and not a merely descriptive designation. Like the mark THE MONEY SERVICE, EMOP falls short of describing Applicant?s goods in any degree of particularity. A consumer would certainly require imagination, thought, perception or additional information to reach any conclusion as to the specific nature of Applicant's mops, namely that they utilize electrolyzed water. Accordingly, EMOP is suggestive for Applicant's Class 7 goods. C. All Doubts Should be Resolved in Favor of Applicant The Trademark Examiner bears the burden of demonstrating that EMOP is merely descriptive in Class 7. In re Bel Paese Sales Co., 1 USPQ 2d 1233 (TTAB 1986). To meet this burden, the Examiner would have to show ?EMOP? does not function as a trademark. See In re National Training Center of Lie Detection, Inc., 226 USPQ 798 (TTAB 1985) (admittedly laudatory phrase ?DEDICATED TO ACHIEVING THE HIGHEST LEVEL OF PROFESSIONALISM? for journals dedicated to polygraph profession allowed in view of lack of showing that such phrase did not function as a trademark). The Examining Attorney has not met her burden. Where there is doubt whether a mark is suggestive or descriptive, any such doubt must be resolved in the applicant?s favor. In re Morton-Norwich Products, Inc., 209 USPQ 791 (TTAB 1981); In re Intelligent Medical Systems, Inc. 5 USPQ 1674, 1676 (TTAB 1987). See also In re Conductive Systems, Inc., 220 USPQ 791 (TTAB 1981). In In re Gourmet Bakers, Inc., 173 USPQ 565 (TTAB 1985), the Board recognized: that there is often a thin line separating merely descriptive from suggestive terms and that judgments in these cases are frequently subjective. However, where there is doubt in the matter, the doubt should be resolved in applicant?s behalf and the mark should be published for opposition. This presumption at the examination stage reflects the ?hazy and only subjectively definable? borderline between suggestive and descriptive marks, J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION ? 11.66 (4th ed. 2000), and the fact that competitors have the opportunity to oppose the application once published and to present evidence that is usually not present in ex parte examination. An objective analysis of EMOP at least raises a doubt as to whether the term is suggestive or descriptive for Applicant's Class 7 goods. Under In re Morton-Norwich Products, Inc., this doubt should be resolved in favor of publishing Applicant?s Mark for opposition purposes.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 003 for cleaner for fruits and vegetables
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: cleaner for fruits and vegetables; liquid and spray cleaner for use on fruits, vegetables and other food itemsClass 003 for liquid and spray cleaner for use on fruits, vegetables and other food items
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 007 for floor cleaning machines for household purposes; hand-held multi-purpose cleaning machines for household purposes
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: floor cleaning machines for household purposes; hand-held multi-purpose cleaning machines for household purposes; hand-held multi-purpose spray cleaning machines for household purposes; apparatus for making cleaning preparations for household purposes.Class 007 for floor cleaning machines for household purposes; hand-held multi-purpose spray cleaning machines for household purposes; apparatus for making cleaning preparations for household purposes.
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for electro-chemical activation equipment in the nature of electrolytic cells for use in treating various aqueous solutions for the production of anolyte and catholyte solutions
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: electro-chemical activation equipment in the nature of electrolytic cells for use in treating various aqueous solutions for the production of anolyte and catholyte solutions; electro-chemical activation equipment in the nature of electrodes, namely anolyte and catholyte for use in treating various aqueous solutionsClass 009 for electro-chemical activation equipment in the nature of electrodes, namely anolyte and catholyte for use in treating various aqueous solutions
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 011 for apparatus for decomposing tap water and various additives to generate electrolyzed water; apparatus for producing cleaning and sanitizing preparations for household purposes
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: apparatus for decomposing tap water and various additives to generate electrolyzed water; electrolytic water generators, namely, apparatus for decomposing tap water and various additives to generate electrolyzed water; apparatus for producing cleaning and sanitizing preparations for household purposesClass 011 for electrolytic water generators, namely, apparatus for decomposing tap water and various additives to generate electrolyzed water
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

SIGNATURE(S)
Response Signature
Signature: /natashashabani/     Date: 07/18/2019
Signatory's Name: Natasha Shabani
Signatory's Position: Attorney of record, CA bar member

Signatory's Phone Number: 310.553.3610

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; 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. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the owner/holder in this matter: (1) the owner/holder has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 88221332
Internet Transmission Date: Thu Jul 18 15:22:58 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XX.X.XXX-201907181522585850
32-88221332-620707357f58e5cfb22f551ae1ef
12a53436c56cb220aa7bfba2c27941e-N/A-N/A-
20190718145523148918