To: | PAX Labs, Inc. (docketing@kelly-ip.com) |
Subject: | U.S. Trademark Application Serial No. 88446316 - ERA PRO - 310.0051 |
Sent: | August 19, 2019 02:51:13 PM |
Sent As: | ecom121@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88446316
Mark: ERA PRO
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Correspondence Address: 1300 19TH STREET, N.W., SUITE 300
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Applicant: PAX Labs, Inc.
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Reference/Docket No. 310.0051
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 19, 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).
IDENTIFICATION OF GOODS
Some of the wording in the identification of goods is indefinite and must be clarified because applicant must identify the goods with greater specificity. For example, software in Class 9 must be “downloadable” and it must provide the particular function of the software. Additionally, in Class 34, applicant must provide additional information, such as the fact that the “vaporizers” are of a nature that they are for smokers, or that the “refill cartridges” are “sold empty”. Finally, the wording “and accessories therefor” is indefinite because it does not identify any particular accessories. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may substitute the following wording, with changes in bold, if accurate:
Class 9: “Downloadable computer software for {specify function of the software}; downloadable software for {specify function of the software} for mobile devices; Downloadable software for {specify function of the software} for use with oral vaporizers, electronic cigarettes; chargers for electric cigarettes and oral vaporizers; battery chargers; electric batteries; AC adaptors being electrical adaptors”
Class 34: “Electronic cigarettes; electronic oral vaporizers for smokers; oral vaporizers for smokers; flavorings, other than essential oils, for use in electronic cigarettes and electronic vaporizers; Chemical flavorings in the form of a liquid solution for use in electronic cigarettes; electronic cigarette and vaporizer refills
cartridges sold empty; electronic cigarette and vaporizer refill cartridges sold empty (Caution – creates duplicate entry with
previous); and accessories therefor.”
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.
DISCLAIMER REQUIRED
Applicant must provide a disclaimer of the unregistrable part(s) of the applied-for mark even though the mark as a whole appears to be registrable. See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a). A disclaimer of an unregistrable part of a mark will not affect the mark’s appearance. See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).
In this case, applicant must disclaim “PRO” because it is not inherently distinctive. These unregistrable term(s) at best are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods. 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).
The attached evidence from www.lexico.com shows this wording is commonly used in connection with similar goods to mean “professional” – that is, the goods are of a “professional” caliber or are an advanced line of goods. Thus, the wording merely describes a feature or aspect of applicant’s goods.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “PRO” 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.
RESPONSE GUIDELINES
Please call or email the assigned trademark examining attorney with questions about this Office action. Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action. See TMEP §§705.02, 709.06. Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
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
/Jason R. Nehmer/
Examining Attorney
Law Office 121
(571) 270-5303
jason.nehmer@uspto.gov
RESPONSE GUIDANCE