Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

FINAL OFFICE ACTION

 

The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned.  Respond using the Trademark Electronic Application System (TEAS) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  October 01, 2019

 

INTRODUCTION

 

This Office action is in response to applicant’s communications filed on 9/24/2019.

 

In a previous Office action dated 3/25/2019, the trademark examining attorney refused registration of the applied-for mark under Trademark Act Section 2(e)1. In addition, applicant was required to satisfy the following requirement(s): amend the identification of goods and services.

 

The trademark examining attorney maintains and now makes FINAL both the refusal under Section 2(e)1 and also the requirement to amend the identification of goods as discussed below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUES:

• SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
• IDENTIFICATION OF GOODS REQUIRES AMENDMENT

 

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

 

Registration is refused because the applied-for mark, PHILTER, merely describes the purpose or function of applicant’s goods, namely, filters for electronic cigarettes.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

 

In addition to being merely descriptive, the applied-for mark appears to be generic in connection with the identified goods and, therefore, incapable of functioning as a source-identifier for applicant’s goods.  In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987); In re Empire Tech. Dev. LLC, 123 USPQ2d 1544 (TTAB 2017); see TMEP §§1209.01(c) et seq., 1209.02(a).  Under these circumstances, neither an amendment to proceed under Trademark Act Section 2(f) nor an amendment to the Supplemental Register can be recommended.  See TMEP §1209.01(c).

 

A novel spelling or an intentional misspelling that is the phonetic equivalent of a generic term is also generic if purchasers would perceive the different spelling as the equivalent of the generic term.  See Nupla Corp. v. IXL Mfg. Co., 114 F.3d 191, 196, 42 USPQ2d 1711, 1716 (Fed. Cir. 1997) (holding CUSH-N-GRIP generic for cushioned tool handles); Micro Motion Inc. v. Danfoss A/S, 49 USPQ2d 1628, 1631 (TTAB 1998) (holding MASSFLO generic for mass flowmeters); see also In re ING Direct Bancorp, 100 USPQ2d 1681, 1690 (TTAB 2011) (holding PERSON2PERSON PAYMENT generic for direct electronic funds transfers including electronic payment services between individuals); TMEP §1209.03(j).

 

An applicant’s own website or marketing material is probative and can be “the most damaging evidence” in showing how the relevant public perceives a term.  In re Mecca Grade Growers, LLC, 125 USPQ2d 1950, 1957 (TTAB 2018) (citing Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d at 966, 114 USPQ2d at 1831; In re Gould Paper Corp., 834 F.2d 1017, 1019, 5 USPQ2d 1110, 1112 (Fed. Cir. 1987)).

 

The attached evidence from applicant’s website shows that applicant itself uses its own applied-for PHILTER mark as a generic term for “filter.” For example, applicant’s site presents “a sophisticated, handheld filter” and “finally a filter made for your lifestyle.” See attached.

 

Descriptiveness is considered in relation to the relevant goods.  DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012).  “That a term may have other meanings in different contexts is not controlling.”  In re Franklin Cnty. Historical Soc’y, 104 USPQ2d 1085, 1087 (TTAB 2012) (citing In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979)); TMEP §1209.03(e).  “It is well settled that so long as any one of the meanings of a term is descriptive, the term may be considered to be merely descriptive.”  In re Mueller Sports Med., Inc., 126 USPQ2d 1584, 1590 (TTAB 2018) (quoting In re Chopper Indus., 222 USPQ 258, 259 (TTAB 1984)).

 

Applicant sells devices that are designed to be used in combination with smoking devices by smokers while smoking. In this marketplace, consumers will immediately recognize the applied-for mark PHILTER with the exact item it describes: a filter. As such, PHILTER is a descriptive term for filters and the application is refused.

 

Applicant should note the additional issue below.

 

IDENTIFICATION OF GOODS REQUIRES AMENDMENT

 

Some of the wording used to describe portions of applicant’s goods in the identification is indefinite and too broad and could include goods and/or services in other international classes. This wording must be clarified for the reasons listed below.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend this wording to specify the common commercial or generic name of the goods and/or services.  See TMEP §1402.01.  If the goods and/or services have no common commercial or generic name, applicant must describe or explain their nature using clear and succinct language.  See id.

 

In Class 34, the wording “Personal air filters for filtering exhaled smoke or vapor; namely that produce by electronic cigarettes” in indefinite       and may be misclassified.  First, the use of a semicolon is improper when used to bridge wording that clarifies other wording.  Rather, commas should be used around “namely”.  (In its response, applicant never removed the semicolon, but merely added a comma after it, which does not remedy the issue.) Second, the nature of the goods is unclear and the classification possibly incorrect because the wording does not clearly indicate whether these goods are stand-alone products, or rather are specifically attached or integral to electronic cigarettes.  If the former, the goods fall into Class 11, while the latter are in Class 34. Applicant must clarify the nature of the goods and classify them appropriately.  The examining attorney suggests examples of acceptable wording and classification below.

 

Applicant may substitute and/or select from the following wording, if accurate:

 

•           Class 11:  Personal, standalone air filtering units for filtering tobacco smoke or vapor exhaled directly into the devices;

•           Class 34:  Personal air filters for attachment to electronic cigarettes for filtering smoke or vapor exhaled from or produced by electronic cigarettes.

 

Scope Advisory. Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e).

 

 

Considering all of the above, the refusal under Trademark Act Section 2(e)1 and the requirement to amend the identification of goods is hereby made FINAL.

 

 

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.  

 

 

How to respond.  Click to file a response to this final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB)

 

 

Becker, Joseph (Trademark)

/Joseph Becker/

Trademark Examining Attorney, Law Office 117

United States PTO

(571) 270-5493

Joseph.Becker1@uspto.gov

 

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on October 01, 2019 for

U.S. Trademark Application Serial No. 88251144

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

Becker, Joseph (Trademark)

/Joseph Becker/

Trademark Examining Attorney, Law Office 117

United States PTO

(571) 270-5493

Joseph.Becker1@uspto.gov

 

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from October 01, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond.

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”