United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88448385
Mark: PROJECTION PICKING SYSTEM (PPS)
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Correspondence Address: |
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Applicant: AIOI·SYSTEMS CO., LTD.
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Reference/Docket No. 261-0002US
Correspondence Email Address: |
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PRIORITY ACTION
NONFINAL OFFICE ACTION
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 25, 2019
USPTO database searched; no conflicting marks found. The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d). 15 U.S.C. §1052(d); TMEP §704.02.
Applicant must address issues shown below. On August 21 and 23, 2019, the examining attorney and Wendy Miller, applicant’s attorney, communicated regarding the issue/requirement below. Applicant must timely respond to this issue/requirement. See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §708.05.
Disclaimer
Applicant must disclaim the descriptive wording “PROJECTION PICKING SYSTEM” apart from the mark as shown because it merely describes an ingredient, quality, characteristic, function, feature, purpose or use of applicant’s goods and/or services. See 15 U.S.C. §§1052(e)(1), 1056(a); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005); In re Gyulay, 820 F.2d 1216, 1217-18, 3 USPQ2d 1009, 1010 (Fed. Cir. 1987); TMEP §§1213, 1213.03(a).
A “disclaimer” is a statement in the application record that applicant does not claim exclusive rights to an unregistrable component of a mark; a disclaimer does not affect the appearance of the mark or physically remove disclaimed matter from the mark. TMEP §§1213, 1213.10. An unregistrable component of a mark includes wording and designs that are merely descriptive of an applicant’s goods and/or services. 15 U.S.C. §1052(e); see TMEP §§1209.03(f), 1213.03 et seq. Such words or designs need to be freely available for other businesses to market comparable goods or services and should not become the proprietary domain of any one party. See Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 1560, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991); In re Aug. Storck KG, 218 USPQ 823, 825 (TTAB 1983).
In this case, the attached evidence from www.dictionary.cambridge.org shows the wording “PROJECTION” means “a picture that is made to appear on a surface, esp. by a special device for showing…images on a screen or other surface”, “PICKING” means “to choose items that have been ordered by a customer” and “SYSTEM” means “a set of connected things or devices that operate together”. Therefore, the wording merely describes to consumers that applicant’s computer goods/services “for tracking, controlling and managing inventory” are for use in connection with a set of connected devices that operate together to choose items that have been ordered by a customer with such sets of connected devices including those that show/project images on a surface/screen. See applicant’s identification of goods/services, attached webpage from applicant’s website indicating that its goods are picking systems featuring projection and/or that project the location and quantity of goods to be picked. See also attached webpages from www.kardex-remstar.com, www.marketwatch.com, www.displayit.com and www.youtube.com, evidencing that picking systems and picking systems using projection are known types of 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 “PROJECTION PICKING SYSTEM” apart from the mark as shown.
TMEP §1213.08(a)(i); see In re Owatonna Tool Co., 231 USPQ 493, 494 (Comm’r Pats. 1983).
Failure to comply with a disclaimer requirement can result in a refusal to register the entire mark. TMEP §1213.01(b).
Examiner’s Amendment
Please note that the issue/requirement set forth in this Office Action can be resolved via an Examiner’s Amendment by contacting the undersigned examining attorney via email at meghan.reinhart@uspto.gov or by phone at 571-272-2943.
Responding to this Office Action
How to respond. Click to file a response to this nonfinal Office action
For this application to proceed toward registration, applicant must explicitly address each refusal and/or requirement raised in this Office action. If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register. Applicant may also have other options for responding to a refusal and should consider such options carefully. To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements.
If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end, the trademark will fail to register, and the application fee will not be refunded. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a), 2.209(a); TMEP §§405.04, 718.01, 718.02. Where the application has been abandoned for failure to respond to an Office action, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to active status. See 37 C.F.R. §2.66; TMEP §1714. There is a $100 fee for such petitions. See 37 C.F.R. §§2.6, 2.66(b)(1).
Telephone/Email Suggested for Questions
/Meghan Reinhart/
Meghan M. Reinhart
Trademark Examining Attorney
Law Office 108
(571) 272-2943
meghan.reinhart@uspto.gov
RESPONSE GUIDANCE