To: | Carlisle Fluid Technologies, Inc. (mail-cfti@fyiplaw.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88318079 - MODEL 2100 - CFTI:0487TRA |
Sent: | 5/9/2019 9:48:53 AM |
Sent As: | ECOM111@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88318079
MARK: MODEL 2100
|
|
CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
|
APPLICANT: Carlisle Fluid Technologies, Inc.
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
|
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: 5/9/2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SEARCH OF OFFICE’S DATABASE OF MARKS
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
REFUSAL – MODEL DESIGNATION
Whether a designation functions as a mark depends on the commercial impression it makes on the relevant public; that is, whether purchasers would likely regard it as a source-indicator for the services. See In re Keep A Breast Found., 123 USPQ2d 1869, 1879 (TTAB 2017) (quoting In re Eagle Crest Inc., 96 USPQ2d 1227, 1229 (TTAB 2010)); TMEP §1202. The specimen and any other relevant evidence of use is reviewed to determine whether an applied-for mark is being used as a service mark. In re Bose Corp., 546 F.2d 893, 897, 192 USPQ 213, 216 (C.C.P.A. 1976); In re Volvo Cars of N. Am., Inc., 46 USPQ2d 1455, 1459 (TTAB 1998).
Specifically, the specimen shows the applied-for mark used as a model – it is in a larger phrase with the actual source identifier, BINKS, but then merely notes MODEL 2100 SPRAY GUN. All explanatory language that follows reaffirms that BINKS is the source identifier, and the proposed mark language merely a model identification. For example, in the top left of the first specimen, applicant states:
Your new Binks spray fun is exceptionally rugged.
This identifies BINKS as the source of the spray gun, and thus is proper trademark usage. No consumer viewing these specimens of use, however, would think they could buy a spraygun from Model 2100. It is not a source, it is the designated model name for this particular unit in sale.
Further, on page 3/16 in the bottom right, applicant offers advice to the consumer, noting:
Binks recommends using Model HFRL-508 Oil and Water Sepatator/Regulator. See your local distributor for other models. (Emphasis added)
Here, applicant has essentially explained to consumers that MODEL ____ is for identifying models of goods, not the source of the goods, and that other models (other goods named MODEL _____ ) can be found through a local distributor.
Applicant may respond to the stated refusal by satisfying one of the following, as appropriate:
(1) Submitting a substitute specimen that shows the applied-for mark being used as a trademark for the identified goods, and the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “The substitute specimen was in use in commerce at least as early as the filing date of the application.” 37 C.F.R. §2.59(a); TMEP §904.05; see 37 C.F.R. §2.193(e)(1). If submitting a substitute specimen requires amendment to the dates of use, applicant must also verify the amended dates. 37 C.F.R. §2.71(c); TMEP §904.05.
(2) Claiming acquired distinctiveness under Trademark Act Section 2(f) by submitting evidence that the applied-for mark has become distinctive of applicant’s goods in commerce. Trademark Act Section 2(f), 15 U.S.C. §1052(f). Evidence may include examples of advertising and promotional materials that specifically promote recognition of the applied-for mark as a trademark; dealer and consumer statements of recognition of the applied-for mark as a trademark; and any other evidence that establishes recognition of the applied-for mark as a trademark for the goods. See 37 C.F.R. §2.41(a)(3); TMEP §§1202.16(c)(ii), 1212.06 et seq. However, long-term use in commerce alone is not sufficient to establish acquired distinctiveness where there is no showing that the designation has been perceived as a trademark. See In re Petersen Mfg. Co., 229 USPQ 466, 468 (TTAB 1986).Thus, a claim of five years use would be insufficient standing alone. See In re Petersen Mfg. Co., 229 USPQ 466, 468 (TTAB 1986); TMEP §1202.16(c)(ii).
(3) Amending the application to seek registration on the Supplemental Register. Trademark Act Section 23, 15 U.S.C. §1091; see 37 C.F.R. §§2.47, 2.75(a); TMEP §§801.02(b), 816.
If applicant cannot satisfy one of the above, applicant may amend the application from a use in commerce basis under Section 1(a) to an intent to use basis under Section 1(b), and the refusal will be withdrawn. See TMEP §806.03(c). However, if applicant amends the basis to Section 1(b), registration will not be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen. See 15 U.S.C. §1051(c), (d); 37 C.F.R. §§2.76, 2.88; TMEP §1103. If the same specimen is submitted with an allegation of use, the same refusal will likely issue.
To amend to Section 1(b), applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “Applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the filing date of the application.” 37 C.F.R. §2.34(a)(2); TMEP §806.01(b); see 15 U.S.C. §1051(b); 37 C.F.R. §§2.35(b)(1), 2.193(e)(1).
The wording in the identification of goods is indefinite, overbroad, or does not sufficiently distinguish the form or function of the goods to be proper beneath the present guidelines of the Trademark Act. Thus, the language must be better-clarified where indicated below, in bold. Explanations for the reasoning behind the indefiniteness, and proper re-classification where applicable, is provided below within the identifications.
Specifically, applicant should note that Class 7 is for power-operated and machine goods, whereas Class 8 is proper for manual/hand-operated goods.
Applicant may therefore adopt the following identification(s), if accurate. See TMEP §1402.01.
Class 7: Spray devices, namely, power-operated spray guns and paint spray guns; manual spray devices, namely, spray coating guns and pneumatic spray guns;
automatic and semi-automatic spraying machines
Class 8: Manual spray devices, namely, hand-operated spray coating guns and pneumatic spray guns
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
RESPONSE GUIDELINES
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.
/Caitlin Watts-FitzGerald/
Trademark Examining Attorney
Law Office 111
571-272-9015
caitlin.watts-fitzgerald@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.