To: | Thane IP Limited (anna.gallace@thanedirect.com) |
Subject: | U.S. Trademark Application Serial No. 88486290 - H2O EMOP - N/A |
Sent: | September 13, 2019 02:54:10 PM |
Sent As: | ecom105@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 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88486290
Mark: H2O EMOP
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Correspondence Address:
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Applicant: Thane IP Limited
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Reference/Docket No. N/A
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: September 13, 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.
Summary of Issues:
SECTION 2(e)(1) REFUSAL – MARK IS MERELY DESCRIPTIVE
Registration is refused because the applied-for mark merely describes a characteristic of applicant’s goods. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.
A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods and/or services. TMEP §1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)).
In this case, applicant seeks to register the mark H2O EMOP for:
The attached dictionary entries defined “H20” as “water.” Moreover, as the attached dictionary entry shows, the letter “e” used as a prefix may signify “electronic.” Moreover, the prefix “e” has become commonly recognized as a designation for goods that are electronic in nature or are sold or provided electronically. For example, an “ediary” is a diary kept in electronic format. As another example, “ebook” identifies electronic books in digital form.
When a mark consists of the “e” prefix coupled with a descriptive word or term for electronic goods and/or services, then the entire mark may be considered merely descriptive under Trademark Act Section 2(e)(1). See In re SPX Corp., 63 USPQ2d 1592 (TTAB 2002) (holding E-AUTODIAGNOSTICS merely descriptive of an electronic engine analysis system comprised of a hand-held computer and related computer software); In re Styleclick.com Inc., 57 USPQ2d 1445 (TTAB 2000) (holding E FASHION merely descriptive of software for consumer use in shopping via a global computer network and of electronic retailing services); TMEP §1209.03(d).
As the identification of goods indicates, applicant’s goods include mops as well as goods that utilize water. Therefore, the mark is descriptive in relation to the goods in that they include mops likely to feature an electronic component and utilize water.
For the foregoing reasons, registration is refused pursuant to Section 2(e)(1) of the Trademark Act. Although the examining attorney has refused registration, applicant may present arguments in support of registration.
SUPPLEMENTAL REGISTER ADVISORY
If applicant files an acceptable allegation of use and also amends to the Supplemental Register, the application effective filing date will be the date applicant met the minimum filing requirements under 37 C.F.R. §2.76(c) for an amendment to allege use. TMEP §§816.02, 1102.03; see 37 C.F.R. §2.75(b). In addition, the undersigned trademark examining attorney will conduct a new search of the USPTO records for conflicting marks based on the later application filing date. TMEP §§206.01, 1102.03.
The amendment to allege use may be filed through the following link:
http://teas.gov.uspto.report/aou/
IDENTIFICATION OF GOODS
This requirement is limited to the following goods in Class 7: apparatus for making cleaning preparations for household purposes.
The wording “apparatus for making cleaning preparations for household purposes” in the identification of goods is indefinite and must be clarified because it does not specify the types of apparatus. Therefore, applicant must amend this wording by indicating the types of apparatus. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may substitute the following wording for Class 7, if such wording accurately identifies the goods for which applicant seeks registration:
floor cleaning machines for household purposes; hand-held multi-purpose spray cleaning machines for household purposes; mixing machines for making cleaning preparations for household purposes
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.
U.S.-LICENSED ATTORNEY REQUIRED
Applicant must be represented by a U.S.-licensed attorney. The application record indicates that applicant’s domicile is outside of the United States, in China, but no attorney who is an active member in good standing of the bar of the highest court of a U.S. State or territory has been appointed to represent the applicant in this matter. All applicants whose permanent legal residence or principal place of business is not within the United States or its territories must be represented by a U.S.-licensed attorney at the USPTO. 37 C.F.R. §§2.2(o), 2.11(a). Thus, applicant is required to be represented by a U.S.-licensed attorney and must appoint one. 37 C.F.R. §2.11(a). This application will not proceed to registration without such appointment and representation. See id. See Hiring a U.S.-licensed trademark attorney for more information.
To appoint or designate a U.S.-licensed attorney. To appoint an attorney, applicant should (1) submit a completed Trademark Electronic Application System (TEAS) Revocation, Appointment, and/or Change of Address of Attorney/Domestic Representative form and (2) promptly notify the trademark examining attorney that this TEAS form was submitted. Alternatively, if applicant has already retained an attorney, the attorney can respond to this Office action by using the appropriate TEAS response form and provide his or her attorney information in the form and sign it as applicant’s attorney. See 37 C.F.R. §2.17(b)(1)(ii).
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
/Melissa Vallillo/
Trademark Examining Attorney
U.S. Patent and Trademark Office
Law Office 105
(571) 272-5891
melissa.vallillo@uspto.gov
RESPONSE GUIDANCE