Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

NONFINAL 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).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

 

Issue date:  November 27, 2019

 

This letter responds to applicant’s communication filed on November 4, 2019. 

 

Withdrawn Matter(s)

The following requirement(s) has been satisfied and withdrawn:  Identification and Classification.  TMEP §§713.02, 714.04.

Matter(s) Continued:  The following refusal is now maintained and CONTINUED: Merely Descriptive Refusal on the Principal Register.  See 37 C.F.R. §2.63(a).

New Issues:  Given the applicant’s response, the examining attorney notes the following new issue(s):  (1) Generic Refusal under Section 1, 2 and 45; (2) Amendment to Allege Use not filed; and (3) Amendment to Supplemental Register Unacceptable

 

 

REFUSAL – APPLIED-FOR MARK IS GENERIC

 

Registration is refused on the Supplemental Register because the applied-for mark AST is generic for applicant’s goods.  Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051, 1052, 1127; see TMEP §§1209.01(c) et seq., 1209.02(b). 

 

“A mark is generic if its primary significance to the relevant public is the class or category of goods 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 at 989-90, 228 USPQ at 530; 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 at issue?

 

(2)       Does the relevant public understand the designation primarily to refer to that genus of goods?

 

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 may be defined by an applicant’s identification of goods.  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 identifies the goods as “Metal fluid storage tanks; metal storage tanks, namely, dry goods storage tanks” and “Plastic fluid storage tanks; Plastic storage tanks, namely, dry goods storage tanks; Fiberglass fluid storage tanks; Fiberglass storage tanks, namely, dry goods storage tanks”, which adequately defines the genus at issue.

 

Regarding the second part of the inquiry, the relevant public is the purchasing or consuming public for the identified goods.  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 from various online websites from the Environmental Protection Agency (EPA), Environmental Protection agencies from different states, and several private companies shows that the acronym “AST” refers to above ground storage tanks.  For example, the examiner notes the following attached references:

 

EPA: The U.S. Environmental Protection Agency (EPA) recognizes that AST is an acronym for above ground storage tanks.  The examiner notes the following reference from the EPA.gov website:  “Facilities with aboveground storage tanks (ASTs) holding oils of any kind may be subject to U.S. EPA's Spill Prevention, Control, and Countermeasure (SPCC) regulation (40 CFR Part 112).”  http://www.epa.gov/ust/aboveground-storage-tanks

 

Pennsylvania Department of Environmental Protection - “An AST is a system consisting of a tank or combination of tanks, and the piping and ancillary equipment connected to it within its containment structure. Systems containing more than very small quantities of regulated substances (PDF) where the system volume is greater than 250 gallons and where 10 percent or less of the system volume is underground are regulated in Pennsylvania by the Storage Tank Program unless one of the exemptions apply. Underground means below the surface of the surrounding soil (ground or pavement), but not in an area which is completely open for tank inspection such as in some mines, basements, or vaults.” http://www.dep.pa.gov/Business/Land/Tanks/Aboveground-Storage-Tanks/Pages/default.aspx

 

West Virginia Department of Environmental Protection - “On March 14, 2015, the 2015 Legislature passed Senate Bill 423 to amend the Aboveground Storage Tank and Public Water Supply Protection Acts. This amended Act became effective June 12, 2015.  … DEP is accepting online AST registrations, modifications to existing registrations, spill plans and inspection certifications via its Electronic Submission System (ESS). The registration process includes questions about tank size, contents, construction, age and location.”

 http://dep.wv.gov/WWE/ee/tanks/abovegroundstoragetanks/Pages/default.aspx

 

Inspectioneering.com - “Aboveground Storage Tanks (AST) are large containers usually made of metal and resting on top of the ground, designed to temporarily hold a number of different liquid or gas substances. These substances can range from water to crude oil to various chemical products.  One of the many standards which applies to aboveground storage tanks is API 653, "Tank Inspection, Repair, Alteration, and Reconstruction." It was developed and published by the American Petroleum Institute (API) and it provides guidelines for the inspection, repair, alteration, and reconstruction of steel aboveground storage tanks used in the petroleum and chemical industries. Before 2000, this was actually the only standard that applied to aboveground storage tanks.”

 http://inspectioneering.com/tag/aboveground+storage+tanks

 

Fedcenter.gov - “Aboveground Storage Tanks (ASTs) … Storage tanks that are aboveground, regardless of whether they are used for to store petroleum products, hazardous waste, or other hazardous material.”

http://www.fedcenter.gov/assistance/facilitytour/tanks/aboveground/

 

Pei - “Commonly abbreviated AST, an aboveground storage tank is a storage tank that is aboveground, regardless of whether they are used for to store petroleum products, hazardous waste, or other hazardous material.  Aboveground storage tanks (ASTs) used for the store of petroleum products is regulated primarily under 40 CFR 112.” http://www.pei.org/wiki/aboveground-storage-tank

 

Wwstanks.com - “Above Ground Water Storage Tanks …. The 60,000 BBL MEGA AST TANK can transform down to a 30,000 BBL AST tank and any size in between. Making this the largest most versatile tank in the industry. Our patented lifting and clip system have proven to be the safest and most secure design possible.” http://wwstanks.com/above-ground-water-storage-tanks/

 

Seneca Companies- “Seneca Companies has specialized in the provision and installation of both underground (UST) and aboveground storage (AST) systems for retail, commercial, marine and emergency uses since our inception in the early 1970’s.” http://www.senecaco.com/services/fuel-systems/equipment-and-products/tanks---ust--ast.aspx

 

Heartland Tank Companies - “Heartland Tank Companies specializes in construction of large above ground welded carbon and stainless steel liquid storage tanks. These large above ground storage tanks (ASTs) range in size from 100,000 up to 4 million gallons or 2,380 to 95,238 tons of liquid product. Such large tanks are field-erected onsite, using cranes and a team of expert welders. Heartland Tank, LLC, the steel tank erection company, has decades of experience in building various configurations of ASTs, providing our teams with specialty knowledge to build a tank to meet your needs and specifications.” http://heartlandtankservices.com/above-ground-storage-tank-construction/

 

Pittsburgh Tank & Tower Group – “Aboveground storage tanks (AST) — storage containers or systems of storage containers located above the earth’s surface — offer great versatility for a wide range of applications. Often found in industrial settings, above ground storage tanks can be used to hold various materials, including petroleum or oil, waste matter, water, chemicals, and hazardous materials. … At Pittsburg Tank & Tower Group (PTTG), we have extensive experience building above ground storage tanks, having produced and erected thousands of welded steel tanks over the years. In fact, we manufacture and construct hundreds of above ground storage tanks each year, providing reliable, versatile solutions for companies in diverse industries, from food and beverage processing to energy and chemical.”  http://www.pttg.com/tanks/

 

Given the widespread use of the term AST in relation to above ground storage tanks, the relevant public would understand the designation to refer primarily to the genus of goods because the applicant provides “fluid storage tanks and dry goods storage tanks” that are ASTs or above ground storage tanks.  Notably, the applicant’s website etctank.com informs consumers that it provides above storage tanks:

 

“Environmental Tank and Container (ETC), a division of JWF Industries, was named Manufacturer of the Year at the 6th Annual Northeast 2018 Oil and Gas Awards … ETC’s entry focused on a new, patent-pending Vertical Storage Tank that the company is manufacturing and marketing throughout the country.  This elliptical-shape tank is the next generation Frac Tank that has been designed to minimize transportation costs while also doubling the tank’s capacity. Another new, patentable product on an oval above ground storage tank is also being pursued.”  http://etctank.com/etc-named-manufacturer-of-the-year/

 

Accordingly, the mark is refused on the Principal and Supplemental Registers.  Although the trademark examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration. 

 

REFUSAL IN THE ALTERNATIVE – APPLIED-FOR MARK IS MERELY DESCRIPTIVE

 

In the alternative, if the applied-for mark AST is ultimately determined not to be generic by an appellate tribunal, then registration is refused because the applied-for mark is merely descriptive of applicant’s goods.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

 

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods.  TMEP §1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)). 

 

Applicant has applied for the mark for use with:

 

“Metal fluid storage tanks; metal storage tanks, namely, dry goods storage tanks” and “Plastic fluid storage tanks; Plastic storage tanks, namely, dry goods storage tanks; Fiberglass fluid storage tanks; Fiberglass storage tanks, namely, dry goods storage tanks”

 

Determining the descriptiveness of a mark is done in relation to an applicant’s goods, the context in which the mark is being used, and the possible significance the mark would have to the average purchaser because of the manner of its use or intended use.  See In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (citing In re Bayer Aktiengesellschaft, 488 F.3d 960, 963-64, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)); TMEP §1209.01(b).  Descriptiveness of a mark is not considered in the abstract.  In re Bayer Aktiengesellschaft, 488 F.3d at 963-64, 82 USPQ2d at 1831.

The examining attorney also submits and relies upon the previously referenced Internet evidence from a search of google.com which establishes that the term AST is widely recognized to refer to above ground storage tanks.  Given the widespread use of the term AST in relation to above ground storage tanks, the relevant public would perceive the mark as a whole to be descriptive when applied to the applicant’s storage tanks.  Notably, the applicant’s website etctank.com informs consumers that it provides above storage tanks:

“Environmental Tank and Container (ETC), a division of JWF Industries, was named Manufacturer of the Year at the 6th Annual Northeast 2018 Oil and Gas Awards … ETC’s entry focused on a new, patent-pending Vertical Storage Tank that the company is manufacturing and marketing throughout the country.  This elliptical-shape tank is the next generation Frac Tank that has been designed to minimize transportation costs while also doubling the tank’s capacity. Another new, patentable product on an oval above ground storage tank is also being pursued.”  http://etctank.com/etc-named-manufacturer-of-the-year/

 

No thought or imagination is required by consumers to understand this feature, characteristic, and/or type when the mark and goods are considered together.

 

Two major reasons for not protecting descriptive marks are (1) to prevent the owner of a descriptive mark from inhibiting competition in the marketplace and (2) to avoid the possibility of costly infringement suits brought by the trademark or service mark owner.  In re Abcor Dev. Corp., 588 F.2d 811, 813, 200 USPQ 215, 217 (C.C.P.A. 1978); TMEP §1209.  Businesses and competitors should be free to use descriptive terms, such as AST, when describing their own goods to the public in advertising and marketing materials.  See In re Styleclick.com Inc., 58 USPQ2d 1523, 1527 (TTAB 2001).   Thus, the wording is descriptive of the applicant’s goods under Section 2(e)(1) of the Trademark Act.

 

For the reasons stated above, the mark is refused on the Principal Register. Although the trademark examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration. 

 

AMENDMENT FROM SECTION 1(b) TO SECTION 1(a) BASIS WITHOUT FILING AMENDMENT TO ALLEGE USE UNACCEPTABLE

 

Applicant has requested to amend the application from an intent-to-use basis under Trademark Act Section 1(b) to a use in commerce basis under Section 1(a).  However, applicant did not file and satisfy the legal requirements for an allegation of use (either an amendment to allege use or a statement of use).  See 37 C.F.R. §2.35(b)(8); TMEP §806.03(e).  Accordingly, the requested amendment is not accepted and the Section 1(b) basis remains the operative basis. 

 

An applicant may amend an application from intent to use to use in commerce only by filing an allegation of use, which has various legal requirements including providing verified dates of first use of the mark, a verified statement that the mark is in use in commerce, a specimen showing actual use of the mark in commerce for each international class, and a fee.  37 C.F.R. §2.35(b)(8); TMEP §806.01(b); see 37 C.F.R. §§2.76, 2.88.  In addition, certain time restrictions apply to filing allegations of use.  See 37 C.F.R. §§2.76(a), 2.88(a); TMEP §§1104.03, 1109.04. 

 

For more information about an allegation of use and requirements for filing either an amendment to allege use or statement of use, please go to the Intent-to-Use Applications webpage.  Allegations of use may be filed online using the Trademark Electronic Application System (TEAS) “Statement of Use/Amendment to Allege Use for Intent-to-Use Application,” form number one (1), located under Intent to Use Forms.

 

REFUSAL – AMENDMENT TO SUPPLEMENTAL REGISTER UNACCEPTABLE – SECTION 1(b) BASIS

 

Registration is refused on the Supplemental Register because the proposed mark is not in lawful use in commerce, as required by Trademark Act Section 23.  See 15 U.S.C. §1091(a); 37 C.F.R. §2.47(a); TMEP §714.05(a)(i).  Specifically, this application is based on applicant’s bona fide intention to use the mark in commerce under Section 1(b), and applicant has not yet submitted an amendment to allege use under 37 C.F.R. §2.76.  See 37 C.F.R. §§2.47(d), 2.75(b); TMEP §§815.02, 1102.03.

 

This refusal will be withdrawn if applicant (1) deletes the amendment to the Supplemental Register, or (2) submits an amendment to allege use that meets the requirements of 37 C.F.R. §2.76(b), (c).  See TMEP §§815.02, 1102.03.

 

If applicant maintains the amendment to the Supplemental Register and provides an acceptable amendment to allege use, the effective filing date of the application will be the date on which applicant met the minimum filing requirements of 37 C.F.R. §2.76(c) for the amendment to allege use.  37 C.F.R. §2.75(b); TMEP §§816.02, 1102.03.  In addition, the undersigned trademark examining attorney will conduct a new search of the USPTO records for conflicting marks based on the later application filing date.  TMEP §§206.01, 1102.03.

 

Advisory:  Prior Application Claim 

 

Applicant has claimed ownership of U.S. Application Serial No. 88007886.  Only claims of ownership of relevant, active registrations are printed on the registration certificate.  See 37 C.F.R. §2.36; TMEP §812.  Therefore, applicant’s claim of ownership of the pending application will not be printed.  However, if the claimed pending application matures into a registration, and if applicant wants to claim ownership of the registration, applicant must provide a claim of ownership with the registration number. 

 

PLEASE NOTE:

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

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.  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 nonfinal Office action.    

 

 

/C. S. Young/

Examining Attorney

(571) 272-9713

skye.young@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 November 27, 2019 for

U.S. Trademark Application Serial No. 88311698

 

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. 

 

 

/C. S. Young/

Examining Attorney

(571) 272-9713

skye.young@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 November 27, 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.”