To: | The Distillata Company (ngingo@rennerotto.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88339825 - DISTILLATA - DISTT0104US |
Sent: | 5/24/2019 4:57:50 PM |
Sent As: | ECOM108@USPTO.GOV |
Attachments: | Attachment - 1 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88339825
MARK: DISTILLATA
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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: The Distillata Company
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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: 5/24/2019
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).
SUMMARY OF ISSUES:
SECTION 2(e)1 REFUSAL – MERELY DESCRIPTIVE
Applicant has applied to register the mark DISTILLATA for “drinking water dispensers” in International Class 11; “bottled water” in International Class 32; “online retail store services featuring bottled water, energy drinks, drinking water dispensers, water filtration and purification units and replacement cartridges and filters therefor, coffee, coffee machines, drinking fountains, and water bottle filling stations” in International Class 35; “Drinking fountain and water bottle filling station installation and repair services” in International Class 37; “delivery of bottled water to homes and offices; delivery of coffee to offices; pool filling services; delivery of water softener salt to homes and offices; delivery of road salt to homes and offices” in International Class 39; and “rental of drinking water dispensers, water filtration systems, and coffee machines” in International Class 43.
The attached evidence from Reverso shows the English translation of “distillata” is “distilled”. This wording is encompassed in applicant’s identification of goods in that applicant presumably provides distilled water. As the specimen for Class 32 indicates, applicant provides “distilled 5 gallon” bottled water. Further, in describing its goods, the specimen states, “Distillata distilled water has meant purity for well over one-hundred years”. Thus, the wording is merely descriptive of applicant’s goods and/or services because applicant presumably provides drinking water dispensers for distilled water in Class 11 and in fact provides distilled bottled water in Class 32. Additionally, applicant’s online retail store services presumably feature distilled bottled water in Class 35. Moreover, applicant’s water bottle filling station installation and repair services are presumably for distilled water stations in Class 37, while applicant is presumably delivering distilled bottled water in Class 39 and renting distilled drinking water dispensers and distilled water filtration systems in Class 43.
Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the goods and/or services is the combined mark registrable. See In re Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968); In re Positec Grp. Ltd., 108 USPQ2d 1161, 1162-63 (TTAB 2013).
In this case, both the individual components and the composite result are descriptive of applicant’s goods and/or services and do not create a unique, incongruous, or nondescriptive meaning in relation to the goods and/or services.
Further, although the applied-for mark shows the wording in stylized lettering, this stylization does not obviate the mere descriptiveness of the applied-for mark. Stylized descriptive or generic wording is registrable only if the stylization creates a commercial impression separate and apart from the impression made by the wording itself. See In re Cordua Rests., Inc., 823 F.3d 594, 606, 118 USPQ2d 1632, 1639-40 (Fed. Cir. 2016); In re Northland Aluminum Prods., Inc., 777 F.2d 1556, 1561, 227 USPQ 961, 964 (Fed. Cir. 1985); TMEP §1209.03(w). Common and ordinary lettering with minimal stylization, as in this case, is generally not sufficiently striking, unique, or distinctive as to make an impression on purchasers separate from the wording. See In re Sadoru Grp., Ltd., 105 USPQ2d 1484, 1487 (TTAB 2012).
As such, applicant’s mark is merely descriptive.
Because the applied-for mark is merely descriptive of a feature of applicant’s goods and services, applicant’s mark must be refused under Trademark Act Section 2(e)(1).
ADVISORY – SECTION 2(f) SUGGESTED BASED ON FIVE YEARS’ USE
To amend the application to Section 2(f) based on five years’ use, applicant should request that the application be amended to assert a claim of acquired distinctiveness under Section 2(f) and submit the following written statement claiming acquired distinctiveness, if accurate:
The mark has become distinctive of the goods and/or services through the applicant’s substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement.
TMEP §1212.05(d); see 15 U.S.C. §1052(f); 37 C.F.R. §2.41(a)(2); TMEP §1212.08. This statement must be verified with an affidavit or signed declaration under 37 C.F.R. §2.20. 37 C.F.R. §2.41(a)(2); TMEP §1212.05(d); see 37 C.F.R. §2.193(e)(1).
REQUIREMENT TO AMEND IDENTIFICATION OF GOODS AND SERVICES
Applicant should note the additional general guidance.
Class 11
Applicant must clarify the wording “drinking water dispensers” in the identification of goods in International Class 11 because it is indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because the type of beverage dispenser applicant is providing has not been specified. Further, this wording could identify goods and/or services in more than one international class. For example, “electronic automated drinking water dispensing machines, not heated or cooled” are in International Class 9, “temperature-controlled drinking water dispensers” are in International Class 11, and “portable drinking water dispensers” are in International Class 21. Therefore applicant must amend the identification to clarify the nature of the goods intended by the wording to ensure proper classification.
Class 39
Applicant must clarify the wording “pool filling services” in the identification of services in International Class 39 because it is indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because the specific nature of services applicant is providing has not been specified. Thus, this wording could identify goods and/or services in more than one international class. For example, “swimming-pool maintenance in the nature of pool filling services” is in International Class 37, and “pool filling services, namely, delivery of pool water” are in International Class 39. Therefore applicant must amend the identification to clarify the nature of the goods intended by the wording to ensure proper classification
Applicant may substitute the following wording, if accurate (proposed amendments in bold):
International Class 9: {specify nature of beverage dispenser, e.g., electronic automated} drinking water dispensing machines, not heated or cooled
International Class 11: {specify nature of beverage dispenser, e.g., temperature-controlled} drinking water dispensers
International Class 21: {specify nature of beverage dispenser, e.g., portable} drinking water dispensers
International Class 32: no change
International Class 35: no change
International Class 37: Drinking fountain and water bottle filling station installation and repair services; {specify nature of services, e.g., swimming-pool maintenance} in the nature of pool filling services {reclassified from Class 39 if accurate}
International Class 39: delivery of bottled water to homes and offices; delivery of coffee to offices; pool filling services, namely, {specify nature of services, e.g., delivery of pool water}; delivery of water softener salt to homes and offices; delivery of road salt to homes and offices
International Class 43: rental of drinking water dispensers, water filtration systems, and coffee machines
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.
MULTIPLE CLASS APPLICATION ADVISORY
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).
(2) Submit a filing fee for each international class not covered by the fees already paid (view the USPTO’s current fee schedule). Specifically, the application identifies goods and/or services based on use in commerce that are classified in at least 8 classes; however, applicant submitted a fee(s) sufficient for only 6 classes. Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.
(3) Submit verified dates of first use of the mark anywhere and in commerce for each international class. See more information about verified dates of use.
(4) Submit a specimen for each international class. The current specimen is acceptable for classes 11, 32, 35, 37, 39 and 43; and applicant needs a specimen for classes 9 and 21. See more information about specimens.
Examples of specimens for goods include tags, labels, instruction manuals, containers, and photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale. Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods.
Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and website printouts that show the mark used in the actual sale, rendering, or advertising of the services.
(5) Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.” See more information about verification.
See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class. See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a). See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.
TRANSLATION OF NON-ENGLISH WORDING IN THE MARK REQUIRED
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.
/Oreoluwa Alao/
Oreoluwa Alao
Examining Attorney
Law Office 108
(571)270-7210
oreoluwa.alao@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.