UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88311416
MARK: RAIN SHOWER HEAD
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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: Huang Xiaoling
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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: 6/2/2019
INTRODUCTION
This Office action is supplemental to and supersedes the previous Office action issued on May 8, 2019 in connection with this application. Based on information and/or documentation in applicant’s response, the trademark examining attorney now issues the following new refusal: Trademark Act 23(c) refusal. See TMEP §§706, 711.02.
In a previous Office action dated May 8, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Action 2(e)(1) refusal for merely describing the identified goods.
In addition, the following refusal(s) and/or requirement(s) have been withdrawn: Trademark Act Section 2(e)(1) refusal. See id.
The following is a SUMMARY OF ISSUES that applicant must address:
• NEW ISSUE: Section 23(c) Refusal – Mark is Generic
Applicant must respond to all issues raised in this Office action and the previous Office action, within six (6) months of the date of issuance of this Office action. 37 C.F.R. §2.62(a); see TMEP §711.02. If applicant does not respond within this time limit, the application will be abandoned. 37 C.F.R. §2.65(a).
SECTION 23(c) REFUSAL – MARK IS GENERIC
REFUSAL REPRESENTS NEW ISSUE
“A mark is generic if its primary significance to the relevant public is the class or category of goods or services on or in connection with which it is used.” TMEP §1209.01(c)(i) (citing H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 989-90, 228 USPQ 528, 530 (Fed. Cir. 1986); In re ActiveVideo Networks, Inc., 111 USPQ2d 1581, 1600 (TTAB 2014)). Determining whether a mark is generic requires a two-step inquiry:
(1) What is the genus of goods and/or services at issue?
(2) Does the relevant public understand the designation primarily to refer to that genus of goods and/or services?
In re Cordua Rests., Inc., 823 F.3d 594, 599, 118 USPQ2d 1632, 1634 (Fed. Cir. 2016) (citing H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d at 990, 228 USPQ at 530); TMEP §1209.01(c)(i).
Regarding the first part of the inquiry, the genus of the goods and/or services may be defined by an applicant’s identification of goods and/or services. See In re Cordua Rests., Inc., 823 F.3d at 602, 118 USPQ2d at 1636 (citing Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 640, 19 USPQ2d 1551, 1552 (Fed. Cir. 1991)); see also In re 1800Mattress.com IP, LLC, 586 F.3d 1359, 1361, 1363, 92 USPQ2d 1682, 1682, 1684 (Fed. Cir. 2009).
In this case, the application for the mark "RAIN SHOWER HEAD" identifies the goods as "Hand-held showers; Hand held shower heads; Hand showers; Plumbing fittings, namely, shower control valves; Shower bases; Shower doors; Shower head sprayers; Shower heads; Shower mixing valves; Shower surrounds; Shower and bath cubicles; Showerheads and components thereof; Showers; Showers and shower cubicles; Water conservation plumbing fixtures, namely, faucets, aerators, showerheads, water saving toilets," which adequately defines the genus at issue.
Thus, the use of the adjective "RAIN" to identify the particular type of shower head provided by applicant is also generic for the genus of the particular goods as the adjective identifies a principal, inseparable feature of the goods themselves. The evidence of record demonstrates that a rain shower head is a particular type of shower head with distinctive functionalities and features that are distinct from shower heads of other types. See attached examples of industry usage of "Rain Shower Head" to identify particular products from Bedbathandbeyond.com, Homedepot.com, Wisepick.org, Apartmenttherapy.com; see also examples from Thespruce.com, Wayfair.com, Overstock.com, Agreatshower.com, Completehomespa.com, attached previously. Thus, the phrase "RAIN SHOWER HEAD" describes the genus of a specific product.
Regarding the second part of the inquiry, the relevant public is the purchasing or consuming public for the identified goods and/or services. Sheetz of Del., Inc. v. Doctor’s Assocs. Inc., 108 USPQ2d 1341, 1351 (TTAB 2013) (citing Magic Wand Inc. v. RDB Inc., 940 F.2d at 640, 19 USPQ2d at 1553). In this case, the relevant public comprises ordinary consumers who purchase applicant’s goods, because there are no restrictions or limitations to the channels of trade or classes of consumers. The attached evidence shows that the wording “RAIN” in the applied-for mark means "Water condensed from atmospheric vapor and falling in drops" or "A fall of such water". See attached definition from Ahdictionary.com. A "SHOWER HEAD" is defined as "a fixture for directing the spray of water in a bathroom shower". See attached definition from Merriam-webster.com. The attached evidence demonstrates that these terms are used frequently together in the relevant industry trade channels to identify bathroom fixtures that dispense water in a manner reminiscent of a rain shower. See attached examples of industry usage of "Rain Shower Head" to identify particular products from Bedbathandbeyond.com, Homedepot.com, Wisepick.org, Apartmenttherapy.com; see also examples from Thespruce.com, Wayfair.com, Overstock.com, Agreatshower.com, Completehomespa.com, attached previously. Thus, the relevant public would understand this designation to refer primarily to that genus of goods because the wording immediately identifies a specific product; a shower head with a spray pattern standardly referred to as mimicking that of rainfall.
For the foregoing reasons, applicant's amendment to the Supplemental Register is rejected, and registration is refusal pursuant to Section 23(c) of the Trademark Act as a result of the applied-for mark generic nature.
RESPONSE GUIDELINES
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
To expedite prosecution of the application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/trademarks/teas/index.jsp. If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/trademarks/teas/e_filing_tips.jsp and e-mail technical questions to TEAS@uspto.gov.
Kathleen Schwarz
/Kathleen Schwarz/
Examining Attorney
Law Office 123
(571) 272-2460
kathleen.schwarz@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.