To: | FLORATINE PRODUCTS GROUP, INC. (sfentress@veritaygroup.com) |
Subject: | U.S. Trademark Application Serial No. 88348355 - SOIL MECHANIX - 12559.00021 |
Sent: | September 06, 2019 07:14:07 PM |
Sent As: | ecom127@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88348355
Mark: SOIL MECHANIX
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Correspondence Address:
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Applicant: FLORATINE PRODUCTS GROUP, INC.
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Reference/Docket No. 12559.00021
Correspondence Email Address: |
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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) and/or Electronic System for Trademark Trials and Appeals (ESTTA). A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action.
Issue date: September 06, 2019
This Office action is in response to applicant’s communication filed on August 27, 2019.
In a previous Office action dated August 23, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(e)(1) for a mark being merely descriptive.
Based on applicant’s response, the trademark examining attorney maintains and now makes FINAL the refusal(s) and/or requirement(s) in the summary of issues below. See 37 C.F.R. §2.63(b); TMEP §714.04.
SUMMARY OF ISSUES MADE FINAL that applicant must address:
In applicant’s response to Office action dated August 27, 2019, applicant provided arguments against the Section 2(e)(1) refusal; however, the trademark examining attorney did not find these arguments persuasive.
SECTION 2(e)(1) REFUSAL – MERELY DESCRIPTIVE
Here, applicant’s mark is SOIL MECHANIX, for “Agricultural testing, namely, agricultural soil testing and soil nutrient analysis for golf courses and sports turf fields” in International Class 42.
Generally, if the individual components of a mark retain their descriptive meaning in relation to the services, the combination results in a composite mark that is itself descriptive and not registrable. In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1516 (TTAB 2016) (citing In re Tower Tech, Inc., 64 USPQ2d 1314, 1317-18 (TTAB (2002)); TMEP §1209.03(d); see, e.g., Apollo Med. Extrusion Techs., Inc. v. Med. Extrusion Techs., Inc., 123 USPQ2d 1844, 1851 (TTAB 2017) (holding MEDICAL EXTRUSION TECHNOLOGIES merely descriptive of medical extrusion goods produced by employing medical extrusion technologies); In re Cannon Safe, Inc., 116 USPQ2d 1348, 1351 (TTAB 2015) (holding SMART SERIES merely descriptive of metal gun safes); In re King Koil Licensing Co., 79 USPQ2d 1048, 1052 (TTAB 2006) (holding THE BREATHABLE MATTRESS merely descriptive of beds, mattresses, box springs, and pillows).
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).
Looking at the mark, the previously attached definition from Merriam-Webster Dictionary showed that SOIL was defined as “firm land; the upper layer of earth that may be dug or plowed and in which plants grow”. Thus, this wording is merely descriptive of a feature or characteristic of applicant’s services, namely, the area or matter of applicant’s agricultural testing services. Additionally, applicant uses the wording soil in their identification of services. Additionally, the wording MECHANIX is the phonetic equivalent to the wording Mechanics, which is defined by the previously attached evidence as “the branch of physics that is concerned with the analysis of the action of forces on matter or material systems”. Thus, this wording is merely descriptive of a feature or function of applicant’s services, namely, how applicant tests the soil or what applicant is doing with their testing.
Applicant argues that the wording MECHANIX is not a real word and thus is fanciful. A novel spelling or an intentional misspelling that is the phonetic equivalent of a merely descriptive word or term is also merely descriptive if purchasers would perceive the different spelling as the equivalent of the descriptive word or term. See In re Quik-Print Copy Shop, Inc., 616 F.2d 523, 526 & n.9, 205 USPQ 505, 507 & n.9 (C.C.P.A. 1980) (holding “QUIK-PRINT,” phonetic spelling of “quick-print,” merely descriptive of printing and photocopying services); In re Calphalon Corp., 122 USPQ2d 1153, 1163 (TTAB 2017) (holding “SHARPIN”, phonetic spelling of “sharpen,” merely descriptive of cutlery knife blocks with built-in sharpeners); In re Carlson, 91 USPQ2d 1198, 1203 (TTAB 2009) (holding “URBANHOUZING,” phonetic spelling of “urban” and “housing,” merely descriptive of real estate services); TMEP §1209.03(j). Here, the –x ending in MECHANIX is the phonetic equivalent of the –cs ending of the wording Mechanics, as these suffixes sound the same and thus the fact that applicant’s mark is an intentional misspelling of the merely descriptive word Mechanics does not obviate the Section 2(e)(1) refusal.
Additionally, applicant states that Mechanics has multiple definitions. However, descriptiveness is considered in relation to the relevant services. DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012). “That a term may have other meanings in different contexts is not controlling.” In re Franklin Cnty. Historical Soc’y, 104 USPQ2d 1085, 1087 (TTAB 2012) (citing In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979)); TMEP §1209.03(e). “It is well settled that so long as any one of the meanings of a term is descriptive, the term may be considered to be merely descriptive.” In re Mueller Sports Med., Inc., 126 USPQ2d 1584, 1590 (TTAB 2018) (quoting In re Chopper Indus., 222 USPQ 258, 259 (TTAB 1984)). Thus, the fact that Mechanics has multiple definitions does not mean that the wording is not descriptive in relation to the services.
Last, applicant argues that for a mark “[t]o be deemed merely descriptive, a mark must directly provide the consumer with reasonably accurate knowledge of the characteristics of the product or service in connection with which it is used”. However, applicant’s test is much stricter than the actual test, as a direct association is not required. Instead, the question is not whether someone presented only with the mark could guess what the services are, but “whether someone who knows what the services are will understand the mark to convey information about them.” DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012) (quoting In re Tower Tech, Inc.,64 USPQ2d 1314, 1316-17 (TTAB 2002)); In re Mueller Sports. Med., Inc., 126 USPQ2d 1584, 1587 (TTAB 2018).
Further, the attached evidence from Southern Illinois University, (“Understanding and applying the concepts of soil mechanics requires sound knowledge of physics, statics, dynamics, mathematics, and mechanics of materials”), http://engineering.siu.edu/civil/facilities/teaching-labs/soil-mechanics.php; Business Dictionary, (“Branch of civil engineering that studies the mechanical [load bearing] properties of soils which vary according to the soul’s air, water, and mineral content”), http://www.businessdictionary.com/definition/soil-mechanics.html; About Civil, (“As the name Soil Mechanics implies the subject is concerned with the deformation and strength of bodies of soil”), http://www.aboutcivil.org/soil-mechanics.html; and New Scientist, (“‘The most damaging type of wear on soccer and rugby pitches is tearing, through scrums in rugby and ‘slide’ tackles in soccer, which both create divots and rip out chunks of turf’, says Bill Adams, who studies the soil mechanics of sports pitches in the University of Wales at Aberystwyth.”, http://institutions.newscientist.com/article/mg15520961-200-tough-turf/, among the previously attached evidence, shows that Soil Mechanics is a known area and discipline regarding the testing and analysis of soil, including for sports fields and turf.
Thus, taken together, the wording SOIL MECHANIX in the applied-for mark conveys an area of science regarding testing and analyzing soil, which describes a feature, characteristic, and function of applicant’s services. Therefore, both the individual components and the composite result are descriptive of applicant’s services and do not create a unique, incongruous, or nondescriptive meaning in relation to the services.
Therefore, the applied for mark is merely descriptive of a characteristic, feature, and purpose of the services. Accordingly, registration is refused on the Principal Register pursuant to Section 2(e)(1) of the Trademark Act.
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.
How to respond. Click to file a response to this final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB).
/Josh Galante/
Joshua M. Galante
Trademark Examining Attorney
Law Office 127
571-272-4310
Josh.Galante@uspto.gov
RESPONSE GUIDANCE