To: | Blount, Inc. (chiipmail@gtlaw.com) |
Subject: | U.S. Trademark Application Serial No. 88499457 - OREGON - 135133.01050 |
Sent: | November 22, 2019 01:31:02 PM |
Sent As: | ecom124@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88499457
Mark: OREGON
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Correspondence Address: |
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Applicant: Blount, Inc.
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Reference/Docket No. 135133.01050
Correspondence Email Address: |
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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: November 22, 2019
This action responds to applicant’s communication dated November 5, 2019.
The proposed amendments to the identification of goods is accepted and the requirement satisfied.
The applicant has responded by requesting registration under Section 2(f) acquired distinctiveness based on active prior U.S. Registration Nos. 4376750, 4459489, 5372629. The Section 2(f) is accepted in part and denied in part.
The Section 2(f) claim is accepted for the following goods: “snow throwers; snow blowers; component parts for snow throwers and snow blowers and accessories in the nature of fitted covers, paddles, blades, and chutes for snow throwers and snow blowers”.
The Section 2(f) claim of acquired distinctiveness is denied and the Section 2(e)(2) refusal is continued and maintained as to the following goods: “electric generators; portable electric power generators; component parts for electric generators and portable electric power generators and accessories in the nature of fitted covers for electric generators and portable electric power generators; high pressure washers; pressure washing machines; component parts for high pressure washers and pressure washing machines and accessories in the nature of spray wands, nozzles, hoses, power-operated spray guns and fittings for high pressure washers and pressure washing machines”
This is a new issue and therefore a non-final action.
Section 2(f) claim of acquired distinctiveness based on prior registrations
The applicant requested registration under Section 2(f) acquired distinctiveness based on active prior U.S. Registration Nos. 4376750, 4459489, 5372629.
An intent-to-use applicant who has used the same mark on related goods and/or services may assert a claim of acquired distinctiveness under Trademark Act Section 2(f) before filing an allegation of use, if applicant can establish that, as a result of applicant’s use of the same mark on other goods and/or services, the mark has become distinctive of the goods and/or services in the intent-to-use application, and that this previously created distinctiveness will transfer to the goods and/or services in the intent-to-use application when use in commerce begins. In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1347, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001); In re Binion, 93 USPQ2d 1531, 1538 (TTAB 2009); TMEP §1212.09(a).
The Trademark Trial and Appeal Board has set forth the following two requirements for showing that a mark in an intent-to-use application has acquired distinctiveness:
(1) Applicant must establish that the same mark has acquired distinctiveness as to the other goods and/or services, by submitting evidence such as ownership of an active prior registration for the same mark for sufficiently similar or related goods and/or services, a prima facie showing of acquired distinctiveness based on five years’ use of the same mark with related goods and/or services, or actual evidence of acquired distinctiveness for the same mark with respect to the other goods and/or services; and
(2) Applicant must show sufficient relatedness of the goods and/or services in the intent-to-use application and those for which the mark has acquired distinctiveness to warrant the conclusion that the previously created distinctiveness will transfer to the goods and/or services in the application upon use. The showing necessary to establish relatedness will be decided on a case-by-case basis and will depend upon the nature of the goods and/or services involved and the language used to identify them in the application.
TMEP §1212.09(a); see Kellogg Co. v. Gen. Mills Inc., 82 USPQ2d 1766, 1770-71 (TTAB 2007); In re Rogers, 53 USPQ2d 1741, 1744-45 (TTAB 1999).
However, the similarity or relatedness of the goods in the prior registrations and the instant application with respect to the following goods: “electric generators; portable electric power generators; component parts for electric generators and portable electric power generators and accessories in the nature of fitted covers for electric generators and portable electric power generators; high pressure washers; pressure washing machines; component parts for high pressure washers and pressure washing machines and accessories in the nature of spray wands, nozzles, hoses, power-operated spray guns and fittings for high pressure washers and pressure washing machines”, is not self-evident and therefore applicant’s Section 2(f) claim is not acceptable without additional information. See 37 C.F.R. §2.61(b); TMEP §1212.04(c).
Although an applicant’s ownership of one or more active prior registrations of the same mark may be sufficient for a prima facie showing of acquired distinctiveness, the prior registration(s) must be for sufficiently similar or related goods and/or services such that distinctiveness will transfer to the goods and/or services in the application. See 37 C.F.R. §2.41(a)(1); In re Rogers, 53 USPQ2d 1741, 1744 (TTAB 1999) (citing Levi Strauss & Co. v. Genesco, Inc., 742 F.2d 1401, 1405, 222 USPQ 939, 942 (Fed. Cir. 1984)); TMEP §§1212.04, 1212.04(c).
Therefore, applicant must submit evidence and an explanation as to how the goods in the claimed active prior registrations are similar or related to the goods in the application such that distinctiveness will transfer to the goods in the application. See 37 C.F.R. §2.61(b); Bausch & Lomb, Inc. v. Leupold & Stevens, Inc., 6 USPQ2d 1475, 1477-78 (TTAB 1988); TMEP §1212.04(c).
General Response Information
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.
/Andrea Butler/
Trademark Attorney
Law Office 124
571-272-7491
andrea.butler@uspto.gov
RESPONSE GUIDANCE