To: | Veolia Nuclear Solutions Inc. (chiipdocket@michaelbest.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88386517 - RECLAIMER OIL AND SOLIDS WATER - 212544-9059 |
Sent: | 6/28/2019 9:00:25 AM |
Sent As: | ECOM112@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88386517
MARK: RECLAIMER OIL AND SOLIDS WATER
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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: Veolia Nuclear Solutions Inc.
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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: 6/28/2019
OPEN APPLICATION ISSUES THAT MUST BE ADDRESSED IN RESPONSE TO OFFICE ACTION:
The following are the open application issues that the applicant must address in order to have a complete response to this Office action:
-Requirement for Submission of a Disclaimer Statement
-Requirement for Amendment to the Mark Description Statement
-Requirement for Amendment to the Color Claim Statement
-Requirement for Clarification of Identification Language
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SEARCH
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).
In order to pursue registration, however, the applicant must respond to the following requirements.
REQUIREMENT for Submission of a Disclaimer Statement
In this case, applicant must disclaim the wording “RECLAIMER” and “OIL AND SOLIDS WATER PROCESSING SYSTEM” because it is not inherently distinctive. These unregistrable terms at best are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
Attached are pages from the digital version of The American Heritage English Dictionary [AHDictionary.com] that defines the term RECLAIM to mean “To bring into or return to a suitable condition for use”. Additional pages show that the suffix –ER is used to mean “One that performs a specified action.” When used in the context of the listed “waste water recycling and separation systems” goods, the term RECLAIMER is merely descriptive of a function and the intended use/purpose for the goods, namely that the applicant’s waste water recycling and separation system goods function to return water to a suitable condition for use or the applicant’s goods function as a waste water reclaimer system.
The applicant lists its goods as: “Waste water recycling and separation systems”, thus use of the wording WATER PROCESSING SYSTEM is the generic name for the type of goods that the applicant produces in this case. Use of the wording OIL AND SOLIDS is merely descriptive of the intended use and function of the goods in that the applicant’s water processing system is intended for use in removing oil and solids from the water it is treating.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “RECLAIMER” and “OIL AND SOLIDS WATER PROCESSING SYSTEM” apart from the mark as shown. \
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
REQUIREMENT for Amendment to the Mark Description/Color Location Statement
The Mark Description/Color Location Statement of record is incomplete and inaccurate because it omits listing the color location of all colors shown in use in the Mark Drawing of record. Although applicant submitted a drawing showing the mark in color with a color claim, applicant did not provide the required description that specifies where each color appears in the literal and design elements in the mark. See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §807.07(a)-(a)(ii). Therefore, applicant must provide this description. See TMEP §807.07(a)(ii).
Generic color names must be used to describe the colors in the mark, e.g., red, yellow, blue. TMEP §807.07(a)(i)-(ii). If black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark, applicant must so specify in the description. See TMEP §807.07(d).
The applicant may address this issue by amending to the following suggested amended Mark Description/Color Location Statement, if accurate:
The mark consists of the stylized wording “RECLAIMER” in black with a blue angle throughout the lettering with the smallest corner of the angle starting in the lower third of the first letter “R” with the angle widening throughout the remaining lettering; all over the stylized wording “OIL AND SOLIDS WATER PROCESSING SYSTEM” in black, with the stylized wording “BY” in gray to the left of the design of a water droplet within a circle in red, to the left of the stylized wording “VEOLIA” in red.
REQUIREMENT for a Amendment to the Color Claim Statement
The applicant may address this issue by amending to the following suggested amended Color Claim Statement, if accurate:
“The colors Black, Blue, Gray and Red are claimed as a feature of the mark.” TMEP §807.07(a)(i).
REQUIREMENT for Clarification of Identification Language
The identification for “waste water recycling and separation systems” in International Class 011 is indefinite and too broad and must be clarified because the wording does not make clear the nature of the specific systems and could identify goods in more than one international class. See 37 C.F.R. §2.32(a)(6); TMEP §1401.05(d). For example, “lawn-care systems comprised of herbicides, pesticides, and lawn sprinklers” are in International Class 5, and “lawn-care systems comprised of lawn mowers and herbicides” are in International Class 7.
Applicant must clarify the goods by (1) describing the nature, purpose, or use of the system; and (2) listing the system’s parts or components, using common generic terms and referencing the primary parts or components of the system first. See 37 C.F.R. §2.32(a)(6); TMEP §§1401.05(d), 1402.01, 1402.03(a). Additionally, this wording should be classified in the same international class as the primary parts or components of the system. See TMEP §1401.05(d).
The applicant may clarify by adopting some or all of the following suggested amended wording in International Class 011, if accurate:
Waste water recycling and separation systems comprised of {specify system components, e.g., waste water purification units, waste water treatment tanks, microbubble generators, water purification, sedimentation and filtration apparatus for clarifying, thickening and filtration of water} for wastewater treatment.
Please note that parentheses are not acceptable in the identification. See TMEP Section 1402.12. Where the wording “{specify …}” appears in this Office Action, the examining attorney has merely suggested ways to cure the indefiniteness of the identification. The applicant must list the goods without parentheses.
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.
ADVISORY –Response Guidelines for TEAS-Plus Applications
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.
If applicant has any questions about its application or needs assistance in responding to this Office Action please telephone the assigned trademark examining attorney directly at the number listed below.
/Amy Kean/
Trademark Attorney, Law Office 112
Phone: 571-272-8854
Amy.Kean@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.