Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

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:  October 29, 2019

 

INTRODUCTION

 

This Office action is issued in connection with applicant’s Response to Office Action dated September 26, 2019.  Based on information and/or documentation in applicant’s response, the trademark examining attorney now issues the following new requirement:  disclaimer of generic matter in the mark.  See TMEP §§706, 711.02. 

 

In a previous Office action dated September 20, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following:  Trademark Act Section 2(e)(1) as the mark is merely descriptive of the applied-for services.  In addition, applicant was required to satisfy the following requirement:  amend the identification of services.

 

The following refusal(s) have also been obviated:  Section 2(e)(1) merely descriptive refusal due to applicant’s amendment to the Supplemental Register.  See id. 

 

The following is a SUMMARY OF ISSUES that applicant must address:

 

            •  NEW ISSUE:  Disclaimer

            •  MAINTAINED: Amendment to the Identification of Services Required - Partial

            •  MAINTAINED: Multiple-Class Application Requirements

 

Applicant must respond to all issues raised in this Office action and the previous September 18, 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).

 

DISCLAIMER

 

Applicant was advised in the previous Office Action that a disclaimer of generic matter in the mark, namely, the term “KITCHENS”, would be required should applicant choose to amend the mark to the Supplemental Register.

 

In that regard, 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 on the Supplemental Register.  See 15 U.S.C. §1056(a), 1091(c); In re Water Gremlin Co., 635 F.2d 841, 845 n.6, 208 USPQ 89, 91 n.6 (C.C.P.A. 1980); 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 the wording “KITCHENS” because it is not inherently distinctive.  These unregistrable term(s) are generic for applicant’s goods and/or services.  See 15 U.S.C. §1091(c); In re Water Gremlin Co., 635 F.2d 841, 845 n.6, 208 USPQ 89, 91 n.6 (C.C.P.A. 1980); TMEP §1213.03(b). 

 

“A mark is generic if its primary significance to the relevant public is the class or category of goods or services on or in connection with which it is used.”  TMEP §1209.01(c)(i) (citing H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 989-90, 228 USPQ 528, 530 (Fed. Cir. 1986); In re ActiveVideo Networks, Inc., 111 USPQ2d 1581, 1600 (TTAB 2014)).  Determining whether a mark is generic requires a two-step inquiry:

 

(1)        What is the genus of goods and/or services at issue?

 

(2)        Does the relevant public understand the designation primarily to refer to that genus of goods and/or services?

 

H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d at 989-90, 228 USPQ at 530; In re Meridian Rack & Pinion, 114 USPQ2d 1462, 1463 (TTAB 2015) (citing In re 1800Mattress.com IP, LLC, 586 F.3d 1359, 1363, 92 USPQ2d 1682, 1684 (Fed. Cir. 2009)); TMEP §1209.01(c)(i). 

 

Regarding the first part of the inquiry, the genus of goods and/or services is often defined by an applicant’s identification of goods and/or services.  See In re Meridian Rack & Pinion, 114 USPQ2d at 1463 (citing Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 640, 19 USPQ2d 1551, 1552 (Fed. Cir. 1991)). 

 

In this case, the application identifies the services as “Cleaning Services, namely, the cleaning of commercial kitchens, bars, cafeterias, food manufacturing facilities, food commissaries, floors, dining areas and kitchen equipment” in Class 37, “Educational services, namely, training in commercial food preparation, handling, cooking, food allergens, alcohol as well as hazard and safety compliance for commercial kitchens” in Class 41, and “Safety auditing and safety compliance in the nature of risk mitigation to improve employee safety and customer safety in work sites being commercial kitchens, commercial cafeterias and industrial settings involving food services, manufacturing and preparation facilities” in Class 42, which adequately defines the genus at issue as applicant explicitly indicates that its services are provided in connection with “KITCHENS” and equipment used in connection therewith. Thus, this term is generic in the context of applicant’s mark as its primary significance to the relevant public is the category of kitchen services applicant provides.

 

Regarding the second part of the inquiry, the relevant public is the purchasing or consuming public for the identified goods and/or services.  Sheetz of Del., Inc. v. Doctor’s Assocs. Inc., 108 USPQ2d 1341, 1351 (TTAB 2013) (citing Magic Wand Inc. v. RDB Inc., 940 F.2d at 640, 19 USPQ2d at 1553).  In this case, the relevant public comprises ordinary consumers who consume applicant’s services, because there are no restrictions or limitations to the channels of trade or classes of consumers.  The attached evidence from the Merriam-Webster Dictionary shows that the wording “KITCHENS” in the applied-for mark means “a place (such as a room) with cooking facilities” and thus the relevant public would understand this designation to refer primarily to the genus of services because the term designates and references the nature of and a main characteristic of applicant’s services which all relate to places with cooking facilities or “KITCHENS.” See the attached dictionary evidence from http://www.merriam-webster.com/dictionary/kitchens.

 

Further to that point, the name of an ingredient, a key aspect, a central focus or feature, or a main characteristic of goods and/or services may be generic for those goods and/or services.  See In re Cordua Rests., Inc., 823 F.3d 594, 604, 118 USPQ2d 1632, 1637-38 (Fed. Cir. 2016) (affirming the Trademark Trial and Appeal Board’s holding of CHURRASCOS (a type of grilled meat) generic for restaurant services); In re Hotels.com LP, 573 F.3d 1300, 1304, 91 USPQ2d 1532, 1535 (Fed. Cir. 2009) (affirming the Trademark Trial and Appeal Board’s holding of HOTELS.COM generic for travel agency services, namely, making reservations and bookings for temporary lodging, and providing information about temporary lodging); In re Emergency Alert Sols. Grp., LLC, 122 USPQ2d 1088, 1091-93 (TTAB 2017) (holding LOCKDOWN ALARM generic for training services focusing on the use of and response to lockdown alarms); In re Meridian Rack & Pinion, 114 USPQ2d 1462, 1465-66 (TTAB 2015) (holding BUYAUTOPARTS.COM generic for on-line retail store services featuring auto parts); TMEP §1209.03(v); see also A.J. Canfield Co. v. Honickman, 808 F.2d 291, 292, 1 USPQ2d 1364, 1365 (3d Cir. 1986) (holding CHOCOLATE FUDGE generic for diet sodas).  Thus, a term does not need to be the name of a specific product and/or service to be found generic.  Any term that the relevant public understands to refer to the genus can be generic.  Royal Crown Co. v. Coca-Cola Co., 892 F.3d 1358, 1367, 127 USPQ2d 1041, 1046 (Fed. Cir. 2018) (quoting In re Cordua Rests., Inc., 823 F.3d at 603, 118 USPQ2d at 1637 (Fed. Cir. 2016)). Therefore, the specimens of record and the Identification of Services clearly indicates that a key aspect or central focus of applicant’s services is to provide services directly relating to the operations of “KITCHENS.” To that point, the term “KITCHENS” is frequently utilized to reference a key aspect or central focus of cleaning services, training, and auditing and compliance services which pertain to places with cooking facilities or “KITCHENS.” See the attached internet evidence from http://www.steamcleaning.us/commercial-kitchen-cleaning/, http://www.commercialkitchencleaners.com/, http://simplifytraining.com/course/kitchen-safety/, http://www.jjkellertraining.com/Views/InteractiveTraining/CourseDescription.aspx?CID=1000, http://www.venners.com/10-areas-inspected-during-a-food-safety-kitchen-audit/, and http://insurancehub.com/commercial-kitchen-safety-checklist/. Furthermore, applicant’s website specifically indicates that its cleaning, training, and compliance services explicitly pertain to commercial kitchens. See applicant’s website at http://safekitchens.com/ (attached to the Office Action dated September 18, 2019) and http://safekitchens.com/about-safe-kitchens/ (attached hereto).

 

Accordingly, although the application has been amended to the Supplemental Register as being merely descriptive based on Section 2(e)(1) of the Trademark Act, applicant must disclaim the wording “KITCHENS” as it is descriptive of the applied-for services.

 

Applicant may respond to this issue by submitting a disclaimer in the following format:

 

No claim is made to the exclusive right to use “KITCHENS” 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.

 

AMENDMENT TO GOODS AND SERVICES – PARTIAL INTERNATIONAL CLASS 42 ONLY

 

The following applies to only the entries identified below in International Class 42. Applicant should note that the goods and services as recited in International Classes 37 and 41 are acceptable as currently identified.

 

The wording “safety compliance in the nature of risk mitigation” in the identification of services for International Class 42 must be clarified because it is too broad and could include services in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass testing, analysis and evaluation of particular services of others to assure compliance with industry standards in Class 42 as well as regulatory compliance consulting services in Class 45. Thus, the wording must be amended to further clarify the nature of applicant’s services.

 

Full Suggested Identifications

 

In the recommendations below, the examining attorney sought to offer comprehensive proposals in instances where the identification of goods or recitations of services require clarification. Applicant is not required to accept these proposals, but any further changes must be within the scope of the identifications set out in the application. Please see below for a more thorough discussion.

 

Suggested amendments appear below. Please note that the suggestions are in bold, explanatory information is in brackets, suggested removal of language is in strikethrough typeface and notations are in italicized parentheses.

 

Additionally, where necessary, the examining attorney has indicated where applicant must supply additional information. In such cases, the wording is presented in bold print within brackets, for example, “Computer software for {specify the function of the programs, e.g., use in database management, use as a spreadsheet, word processing, etc., and if software is content- or field-specific, the content or field of use}.” In such case, applicant must supply the required information within the brackets and must remove the brackets from the identification of goods and/or services.

 

Applicant may substitute the following wording if acceptable and accurate:

 

In Class 37: (no changes)

 

Cleaning Services, namely, the cleaning of commercial kitchens, bars, cafeterias, food manufacturing facilities, food commissaries, floors, dining areas and kitchen equipment

 

In Class 41: (no changes)

 

“Educational services, namely, training in commercial food preparation, handling, cooking, food allergens, alcohol as well as hazard and safety compliance for commercial kitchens”

 

In Class 42:

 

Safety auditing and safety compliance in the nature of risk mitigation in relation to {specify nature of risk mitigation and safety compliance services in Class 42, e.g., Testing, analysis, and evaluation of (indicate goods or services of others} to assure compliance with industry standards)} to improve employee safety and customer safety in work sites being commercial kitchens, commercial cafeterias and industrial settings involving food services, manufacturing and preparation facilities

 

In Class 45:

 

Safety compliance in the nature of risk mitigation in relation to {specify nature of risk mitigation and safety compliance services in Class 45, e.g., Regulatory compliance consulting in the field of (specify field or subject matter)} to improve employee safety and customer safety in work sites being commercial kitchens, commercial cafeterias and industrial settings involving food services, manufacturing and preparation facilities

 

Scope Advisory and Identification of Manual Reference

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e).

 

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.

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

The application references goods and/or services based on use in commerce in more than one international class; therefore, applicant must satisfy all the requirements below for each international class:

 

(1)        List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).

 

(2)        Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).  Specifically, the application identifies goods and/or services based on use in commerce that are classified in at least 4 classes; however, applicant submitted a fee(s) sufficient for only 3 classes.  Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.

 

(3)        Submit verified dates of first use of the mark anywhere and in commerce for each international class.  See more information about verified dates of use.

 

(4)        Submit a specimen for each international class.  The current specimen is acceptable for all classes.  See more information about specimens.

 

            Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and website printouts that show the mark used in the actual sale, rendering, or advertising of the services. 

 

(5)        Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.”  See more information about verification.

 

See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).

 

See an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

COMMUNICATIONS WITH THE TRADEMARK OFFICE

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 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 nonfinal Office action  

 

 

/Lauren R. Roncoroni/

Lauren R. Roncoroni

Trademark Examining Attorney

Law Office 109

(571) 270-5661

Lauren.Roncoroni@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on October 29, 2019 for

U.S. Trademark Application Serial No. 88480447

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Lauren R. Roncoroni/

Lauren R. Roncoroni

Trademark Examining Attorney

Law Office 109

(571) 270-5661

Lauren.Roncoroni@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from October 29, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond.

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”