To: | Aerospace Lubricants, Inc. (Roger.Gilcrest@icemiller.com) |
Subject: | U.S. Trademark Application Serial No. 88486733 - AEROSPACE LUBRICANTS - 43229.0021 |
Sent: | September 13, 2019 09:34:15 PM |
Sent As: | ecom102@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88486733
Mark: AEROSPACE LUBRICANTS
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Correspondence Address:
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Applicant: Aerospace Lubricants, Inc.
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Reference/Docket No. 43229.0021
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
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.
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Potential Conflicting Application
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In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
Refusal of Registration: Mark is Merely Descriptive
In the present case, the relevant goods/services consist of:
CLASS 004: lubricants, namely, all-purpose lubricants, synthetic motor and gear oils, general purpose synthetic greases, and synthetic wide-temperature range lubricating greases for a wide variety of industrial, vehicular and military uses; food grade lubricant for industrial use in the food packaging industry and food service industry;
CLASS 040: manufacturing services for others in the field of lubricants and greases; custom manufacture of lubricants and greases for others; custom manufacture of lubricants and greases to the order and specification of others.
For these goods and services, the applicant applied to register the mark AEROSPACE LUBRICANTS, in stylized form.
Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the goods and/or services is the combined mark registrable. See In re Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968); In re Positec Grp. Ltd., 108 USPQ2d 1161, 1162-63 (TTAB 2013).
Evidence
In this case, both the individual components and the composite result are descriptive of applicant’s goods and/or services and do not create a unique, incongruous, or nondescriptive meaning in relation to the goods and/or services.
Specifically, the term “aerospace” means “space comprising the earth's atmosphere and the space beyond” and “of or relating to aerospace, to vehicles used in aerospace or the manufacture of such vehicles, or to travel in aerospace.” See attachment from http://www.merriam-webster.com/dictionary/aerospace.
The term “lubricant” means “a substance (such as grease) capable of reducing friction, heat, and wear when introduced as a film between solid surfaces.” See attachment from http://www.merriam-webster.com/dictionary/lubricant. The applicant’s use of the term in its identification of goods and services demonstrates that the term is generic with respect to the goods and services.
The applicant’s website indicates that:
Our Tribolube® family of synthetic lubricants contains a large number of products that are particularly well suited for Aerospace applications.
See attachments from http://www.aerospacelubricants.com/markets/aerospace/.
The terms of the mark, when combined, merely describe lubricants intended for use on air and space vehicles. The wording merely describes the type of goods provided and manufactured by the applicant.
Stylized Lettering of mark Insufficient to Overcome Descriptiveness Refusal
The applied-for mark shows the wording in stylized lettering. Stylized descriptive or generic wording is registrable only if the stylization creates a commercial impression separate and apart from the impression made by the wording itself. See In re Cordua Rests., Inc., 823 F.3d 594, 606, 118 USPQ2d 1632, 1639-40 (Fed. Cir. 2016); In re Northland Aluminum Prods., Inc., 777 F.2d 1556, 1561, 227 USPQ 961, 964 (Fed. Cir. 1985); TMEP §1209.03(w). Common and ordinary lettering with minimal stylization, as in this case, is generally not sufficiently striking, unique, or distinctive as to make an impression on purchasers separate from the wording. See In re Sadoru Grp., Ltd., 105 USPQ2d 1484, 1487 (TTAB 2012).
How to respond. Click to file a response to this nonfinal Office action
/Rudy R. Singleton/
U.S. Patent and Trademark Office
Trademark Examining Attorney, Law Office 102
571-272-9262
RUDY.SINGLETON@USPTO.GOV
RESPONSE GUIDANCE