To: | Malco Products, Inc. (pto@rennerkenner.com) |
Subject: | U.S. Trademark Application Serial No. 88418750 - GLAZE II - MCO.T0040 |
Sent: | August 24, 2019 02:38:02 PM |
Sent As: | ecom125@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88418750
Mark: GLAZE II
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Correspondence Address: RENNER, KENNER, GREIVE, BOBAK, TAYLOR & |
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Applicant: Malco Products, Inc.
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Reference/Docket No. MCO.T0040
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). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: August 24, 2019
This Office action is supplemental to and supersedes the previous Office action issued on July 26, 2019 in connection with this application. Based on information and/or documentation in applicant’s response, the trademark examining attorney now issues the following new requirement: Section 2(f) Claim Refused. See TMEP §§706, 711.02.
In a previous Office action dated July 26, 2019, applicant was required to satisfy the following requirement: Disclaimer Requirement.
That requirement is continued and MAINTAINED.
The following is a SUMMARY OF ISSUES that applicant must address:
• NEW ISSUE: Section 2(f) Claim Refused
• Disclaimer Requirement
Applicant must respond to all issues raised in this Office action and the previous July 26, 2019 Office action, within six (6) months of the date of issuance of this Office action. 37 C.F.R. §2.62(a); see TMEP §711.02. If applicant does not respond within this time limit, the application will be abandoned. 37 C.F.R. §2.65(a).
SECTION 2(f) CLAIM REFUSED
Applicant asserted a claim of acquired distinctiveness under Trademark Act Section 2(f) based on applicant’s use of the mark in commerce with applicant’s goods for five years prior to the date on which the claim is made. See 15 U.S.C. §1052(f). However, as the attached and previously attached evidence demonstrates, the allegation of five years’ use is insufficient to show acquired distinctiveness because the applied-for mark is highly descriptive of applicant’s goods. See In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 1336-37, 116 USPQ2d 1262, 1265 (Fed. Cir. 2015); Alacatraz Media Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1765 (TTAB 2013); TMEP §1212.05(a); See http://www.drbeasleys.com/blog/2012/02/24/what-you-need-to-know-about-glazes/; http://www.meguiars.com/professional/products/meguiars-mirror-glaze-professional-show-car-glaze-m0716-16-oz; http://www.autopia.org/forums/machine-polishing-sanding/185935-difference-polish-glaze.html; and http://cpcardetailing.com/differences-between-car-wax-sealants-coatings-polishes-and-glazes/. Applicant may respond by providing additional evidence of acquired distinctiveness.
An applicant bears the burden of proving that a mark has acquired distinctiveness under Trademark Act Section 2(f). In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 1335, 116 USPQ2d 1262, 1264 (Fed. Cir. 2015) (citing In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1422 (Fed. Cir. 2005)); TMEP §1212.01. “To show that a mark has acquired distinctiveness, an applicant must demonstrate that the relevant public understands the primary significance of the mark as identifying the source of a product or service rather than the product or service itself.” In re Steelbuilding.com, 415 F.3d at 1297, 75 USPQ2d at 1422.
In the present case, applicant’s claim of acquired distinctiveness based on five years’ use in commerce is insufficient to show acquired distinctiveness of the applied-for mark because the term “GLAZE” is in widespread use in the relevant marketplace.
To support the claim of acquired distinctiveness, applicant may respond by submitting other evidence. See TMEP §1212.02(g). Such evidence may include “advertising expenditures, sales success, length and exclusivity of use, unsolicited media coverage, and consumer studies (linking the name to a source).” In re Change Wind Corp., 123 USPQ2d 1453, 1467 (TTAB 2017) (quoting In re Steelbuilding.com, 415 F.3d 1293, 1300, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005)). A showing of acquired distinctiveness need not consider all of these types of evidence; no single factor is determinative. In re Steelbuilding.com, 415 F.3d at 1300, 75 USPQ2d at 1424; see TMEP §§1212.06 et seq. Rather, the determination involves assessing all of the circumstances involving the use of the mark. See In re Steelbuilding.com, 415 F.3d at 1300, 75 USPQ2d at 1424 (citing Thompson Med. Co., Inc. v. Pfizer Inc., 753 F.2d 208, 217, 225 USPQ2d 124, 131-32 (Fed. Cir. 1985)).
If applicant cannot submit additional evidence to support the claim of acquired distinctiveness, applicant may respond to the refusal by submitting the required disclaimer.
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. 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
/Teague Avent/
Teague Avent
Examining Attorney
Law Office 125
(571) 272-1219
teague.avent@uspto.gov
RESPONSE GUIDANCE