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)

---

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. 88262779 REGULATOR(Standard Characters, see http://uspto.report/TM/88262779/mark.png) has been amended as follows:

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

Serial Number:  88/262,779

Mark: REGULATOR (Class 11)

 

RESPONSE TO OFFICE ACTION

 

Applicant Waterworks IP Co., LLC hereby responds to the Office Action dated March 28, 2019 (the “Office Action”). In the Office Action, the examining attorney (the “Examiner”) refuses registration of Applicant’s mark, REGULATOR (“Applicant’s Mark”), on the bases that (a) Applicant’s Mark is merely descriptive for the goods within the application, (b) several terms within the applications are indefinite, and (c) additional information about the goods contained within the application are required.

 

Applicant responds by amending the application’s ID to remove all indefinite terms, providing the requested additional information, and providing evidence showing that Applicant’s Mark is not descriptive.

 

1. Applicant amends its ID to remove the indefinite terms

    

   As proposed by the Examiner, Applicant agrees to amend its ID to be:

    

   Bathroom, plumbing and shower fixtures and accessories, namely, faucets, faucet control valves, hand-held showers, shower heads, thermostatic diverter valve being thermostatic mixing valves, control valves in the nature of spouts, traps, water supply valves, and drains; tub fillers, namely, spouts; mixer faucets for water pipes; shower head sprayers; head and arm swivels being plumbing fittings.

    

2. Applicant provides the requested information

    

   In the Office Action, the Examiner requested product information about the goods covered by the application, in particular information clearly indicating how the products operate, their salient features, and their prospective customers and channels of trade.  Attached at Exhibit A is a printout of Applicant website showing the products it sells under Applicant’s Mark (available at http://www.waterworks.com/us_en/regulator), along with printouts showing the detail pages for faucets (http://www.waterworks.com/us_en/regulator-low-profile-three-hole-wall-mounted-lavatory-faucet-with-low-black-wheel-handles-rgls60), and shower head sprayers (http://www.waterworks.com/us_en/regulator-ceiling-mounted-10-shower-rose-arm-and-flange-rgsh10).  Those detail pages, along with the other pages available at the website above, show the requested information about the products sold under Applicant’s Mark, including how the products operate, their features, and channels of trade. 

    

3. Applicant’s Mark is not merely descriptive of the goods in the application

    

   Applicant’s REGULATOR mark is at least suggestive and not merely descriptive of the goods and services set forth in the subject application. “A mark is merely descriptive [of a product] if it would immediately convey to one seeing or hearing it the thought of [applicant’s products].” In re Hutchinson Technology, Inc., 852 F.2d 552, 555 (Fed. Cir. 1988) (reversing refusal to register HUTCHINSON TECHNOLOGY for etched metal electronic component, flexible circuits, etc. as clearly erroneous) (emphasis added). “Suggestive marks 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). Following the “degree of imagination” test, a mark is not merely descriptive unless there is an “almost instantaneous” connection between the mark and the product or service attributes. McCarthy on Trademarks & Unfair Competition § 11:67 (4th ed. 2006); see also Stix Products, Inc. v. United Merchants & Mfg., Inc., 295 F. Supp. 479, 488 (S.D.N.Y. 1968) (finding CON-TACT mark not descriptive of self-adhesive decorative plastic where “more than mere observation is required”). 

    

   Applicant’s mark does not immediately describe the recited goods, and a sufficient degree of imagination is required to determine the significance of the mark.  First, the term “regulator” in connection with plumbing and bathroom fixtures has a very specific meaning, i.e., a “water pressure regulator.”  See http://www.plumbingsupply.com/plumbing_dictionary.html, http://www.plumbingsupply.com/waterpressureregulators.html, and a Google Image Search for “plumbing regulator,” attached as Exhibit B.  As these printouts show, when a consumer sees the mark REGULATOR in connection with plumbing related fittings and valves, the mark does not immediately convey information about the products covered by the Application.  Instead, the consumer will need to use some imagination, thought, or perception to understand the goods, and the connection of Applicant’s Mark to the goods.  As a result, Applicant’s Mark is best described as suggestive.  See TMEP § 1209.01(a) (“Suggestive marks are those that, when applied to the goods or services at issue, require imagination, thought, or perception to reach a conclusion as to the nature of those goods or services. Thus, a suggestive term differs from a descriptive term, which immediately tells something about the goods or services.”).

    

   Additionally, Applicant is the owner of a registration for REGULATOR for similar goods, Reg. No. 5,513,928 for REGULATOR for “Plumbing fittings, namely, trim plates and handles” in Class 11.  This existing registration for similar goods lends support to Applicant’s argument that consumers are likely to view Applicant’s Mark as an indicator of source, and therefore not descriptive.

    

4. Even if Applicant’s Mark was descriptive, it has gained secondary meaning as a result of its longstanding use in connection with the goods.

    

   Through widespread sales, use, advertising efforts, and recognition over a period of 5 years, Applicant’s Mark has acquired secondary meaning and serves as a source-identifier for the goods within the application.  See TMEP § 1212.06.  The Board has held that an applicant can “establish acquired distinctiveness” through evidence including “(i) ownership of a prior registration for the same mark for related goods or services, (ii) a prima facie claim of acquired distinctiveness based on five years use of the same mark with related goods or services or (iii) actual evidence of acquired distinctiveness for the same mark with respect to the other goods or services.”  In Re Olin Corp., 124 U.S.P.Q.2d 1327 (T.T.A.B. 2017).

    

   Here, Applicant presents two of the three types of evidence to show acquired distinctiveness.  First, as explained above, Applicant is the owner of a registration for REGULATOR for similar goods, Reg. No. 5,513,928 for REGULATOR for “Plumbing fittings, namely, trim plates and handles” in Class 11.  This existing registration for similar goods lends support to Applicant’s argument that consumers are likely to view Applicant’s Mark as an indicator of source, and therefore not descriptive.  And second, Applicant has been using Applicant’s Mark in connection with the same or related goods or services, as shown by its registration for Applicant’s Mark on the Supplemental Register, Reg. No. 4,714,331 for “Plumbing fittings, namely, faucets, pot fillers in the nature of spouts and handles, sink spouts, water control wall valves, water control valves, sink sprayers; kitchen sink accessories, namely, kitchen sink sprayers; kitchen mixers, namely, mixer faucets for water pipes” in Class 11.  That registration was filed in August 2013 and claims a first use date of October 2014.  That registration has existed on the Supplemental Register and been in used for 5 years, which is prima facie evidence of the acquired distinctiveness of Applicant’s Mark.

   Such evidence is sufficient to establish acquired distinctiveness, and the USPTO has found that other marks acquired distinctiveness with similar evidence of secondary meaning.  See Yamaha International Corp. v. Hoshino Gakki Co., 6 U.S.P.Q.2d 1001, 1010 (Fed. Cir. 1988) (affirming finding of acquired distinctiveness for guitar peg head design based on eight years of use of the mark, with court holding that “proof based essentially on use in advertising and promotion in conjunction with other circumstantial factors has been deemed sufficient to establish secondary meaning”); In re Haggar Co., 217 U.S.P.Q. 81, 84 (T.T.A.B. 1982) (background design of a black swatch held registrable pursuant to §2(f) for clothing where applicant had submitted, inter alia, evidence of “very substantial advertising and sales”); and In re Instant Transactions Corp., 201 U.S.P.Q. 957 (T.T.A.B. 1979) (Board found secondary meaning based upon distribution of promotional materials at 24 bank branches and 34 participating merchants and advertising costs of $100,000). 

    

5. All Doubts Must be Resolved in Favor of the Applicant

    

               The arguments outlined herein establish that Applicant’s REGULATOR mark is at least suggestive and not merely descriptive of the goods identified in the application, or has obtained the requisite secondary meaning to be approved. To the extent Examiner has doubts, any doubts as to the descriptiveness of a mark must be resolved in Applicant’s favor. See In re The Stroh Brewery Co., 34 U.S.P.Q. 2d 1796, (TTAB 1994) (“when doubt exists as to whether a term is descriptive as applied to the goods or services for which registration is sought, it is the practice of the Board to resolve doubts in favor of the Applicant and pass the mark to publication.”) and In re Salzgitter Flachstahl GmbH, 2007 WL 1893923, 5 (T.T.A.B. June 27, 2007) (“in descriptiveness cases . . . we must resolve any doubts that we may have about whether applicant's mark is merely descriptive in applicant's favor”).

    

   Additionally, where there is a question of descriptiveness, the PTO prefers to “resolve doubts in applicant's favor and publish the mark for opposition."  In re Morton-Norwich Products, Inc., 209 USPQ 791, 791 (TTAB 1981).  Applicant respectfully asserts that this should be the case here – due to the fact that none of the products within the Application are “regulators” as the term is used in the plumbing industry, and due to Applicant’s longstanding sale of the products under the REGULATOR mark, the Examiner should approve the application and allow the mark to be published.  During publication, if the mark truly is used descriptively, any of the thousands of manufacturers or retailers of bathroom and plumbing fixtures across the country could oppose.  Applicant is confident, however, that there will be no such opposition, as the bathroom and plumbing industry knows “REGULATOR” is not a descriptive mark for such products.

    

6. Conclusion

    

   For the reasons stated above, Applicant’s Mark is not descriptive for the products within the application.  Instead, the mark forces consumers to use their imagination and think a little in order to understand the nature of the goods offered under the mark.  Therefore, Applicant’s Mark REGULATOR is best described as suggestive.  Additionally, even if the Examiner believes the mark is descriptive, the longstanding sale of products under the REGULATOR mark shows that the mark has acquired sufficient secondary meaning to be approved for registration.

    

   As a result, Applicant believes all outstanding issues with respect to the application for the subject mark have been resolved and respectfully requests approval of the same for publication.

EVIDENCE

Original PDF file:
evi_641610870-20190930181235762283_._REGULATOR_Class_11_-_Offce_Action_Response_Exhibits.pdf
Converted PDF file(s) ( 68 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Evidence-12
Evidence-13
Evidence-14
Evidence-15
Evidence-16
Evidence-17
Evidence-18
Evidence-19
Evidence-20
Evidence-21
Evidence-22
Evidence-23
Evidence-24
Evidence-25
Evidence-26
Evidence-27
Evidence-28
Evidence-29
Evidence-30
Evidence-31
Evidence-32
Evidence-33
Evidence-34
Evidence-35
Evidence-36
Evidence-37
Evidence-38
Evidence-39
Evidence-40
Evidence-41
Evidence-42
Evidence-43
Evidence-44
Evidence-45
Evidence-46
Evidence-47
Evidence-48
Evidence-49
Evidence-50
Evidence-51
Evidence-52
Evidence-53
Evidence-54
Evidence-55
Evidence-56
Evidence-57
Evidence-58
Evidence-59
Evidence-60
Evidence-61
Evidence-62
Evidence-63
Evidence-64
Evidence-65
Evidence-66
Evidence-67
Evidence-68

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 011 for Bathroom, plumbing and shower fixtures and accessories, namely, faucets, faucet control valves, hand-held showers, shower heads, thermostatic diverter valve, control valves in the nature of spouts, traps, water supply valves, and drains; tub fillers, namely, spouts; mixer faucets for water pipes; shower rose sprayers; head and arm swivels
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 10/00/2017 and first used in commerce at least as early as 10/00/2017 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Bathroom, plumbing and shower fixtures and accessories, namely, faucets, faucet control valves, hand-held showers, shower heads, thermostatic diverter valve, control valves in the nature of spouts, traps, water supply valves, and drains; Bathroom, plumbing and shower fixtures and accessories, namely, faucets, faucet control valves, hand-held showers, shower heads, thermostatic diverter valve being thermostatic mixing valves, control valves in the nature of spouts, traps, water supply valves, and drains; tub fillers, namely, spouts; mixer faucets for water pipes; shower rose sprayers; shower head sprayers; head and arm swivels; head and arm swivels being plumbing fittings.Class 011 for Bathroom, plumbing and shower fixtures and accessories, namely, faucets, faucet control valves, hand-held showers, shower heads, thermostatic diverter valve being thermostatic mixing valves, control valves in the nature of spouts, traps, water supply valves, and drains; tub fillers, namely, spouts; mixer faucets for water pipes; shower head sprayers; head and arm swivels being plumbing fittings.
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 10/00/2017 and first used in commerce at least as early as 10/00/2017 , and is now in use in such commerce.
The applicant's current attorney information: Michael J. McCue. Michael J. McCue of LEWIS ROCA ROTHGERBER CHRISTIE LLP, is located at

      SUITE 600
      3993 HOWARD HUGHES PARKWAY
      LAS VEGAS, Nevada 89169
      US
The docket/reference number is 302384-01095.

The phone number is 702-949-8200.

The fax number is 702-949-8376.

The email address is TRADEMARKS-LASVEGAS@LRRC.COM

The applicants proposed attorney information: Michael J. McCue. Michael J. McCue of LEWIS ROCA ROTHGERBER CHRISTIE LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      SUITE 600
      3993 HOWARD HUGHES PARKWAY
      LAS VEGAS, Nevada 89169
      United States
The docket/reference number is 302384-01095.

The phone number is 702-949-8200.

The fax number is 702-949-8376.

The email address is TRADEMARKS-LASVEGAS@LRRC.COM

Michael J. McCue submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.
The applicant's current correspondence information: MICHAEL J. MCCUE. MICHAEL J. MCCUE of LEWIS ROCA ROTHGERBER CHRISTIE LLP, is located at

      SUITE 600
      3993 HOWARD HUGHES PARKWAY
      LAS VEGAS, Nevada 89169
      US
The docket/reference number is 302384-01095.

The phone number is 702-949-8200.

The fax number is 702-949-8376.

The email address is TRADEMARKS-LASVEGAS@LRRC.COM

The applicants proposed correspondence information: Michael J. McCue. Michael J. McCue of LEWIS ROCA ROTHGERBER CHRISTIE LLP, is located at

      SUITE 600
      3993 HOWARD HUGHES PARKWAY
      LAS VEGAS, Nevada 89169
      United States
The docket/reference number is 302384-01095.

The phone number is 702-949-8200.

The fax number is 702-949-8376.

The email address is TRADEMARKS-LASVEGAS@LRRC.COM

SIGNATURE(S)
Response Signature
Signature: /Michael J. McCue/     Date: 09/30/2019
Signatory's Name: Michael J. McCue
Signatory's Position: Attorney of record, Nevada bar member

Signatory's Phone Number: 702.949.8200

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.

Mailing Address:    MICHAEL J. MCCUE
   LEWIS ROCA ROTHGERBER CHRISTIE LLP
   SUITE 600
   3993 HOWARD HUGHES PARKWAY
   LAS VEGAS, Nevada 89169
Mailing Address:    Michael J. McCue
   LEWIS ROCA ROTHGERBER CHRISTIE LLP
   SUITE 600
   3993 HOWARD HUGHES PARKWAY
   LAS VEGAS, Nevada 89169
        
Serial Number: 88262779
Internet Transmission Date: Mon Sep 30 18:26:56 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XX-20190930182656690
042-88262779-610dfb650504a424460e0bea5bd
b156635d6852b199fa9c85d4d87fe461122d26c-
N/A-N/A-20190930182624872645