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:  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 did not respond to the requirement for a new drawing.  The requirement is continued and maintained.

 

• The applicant has responded by requesting registration under Section 2(f) acquired distinctiveness based on active prior U.S. Registration Nos. 5372629, 4459489, 4376750, 2889236, and 3789762.  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. 5372629, 4459489, 4376750, 2889236, and 3789762.

 

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).

 

Here, the applicant claims that the applied-for mark has acquired distinctiveness under Trademark Act Section 2(f) based on applicant’s prior registrations for the same mark.  The claim is accepted for the following goods only: “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”.

 

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 such that distinctiveness will transfer to the goods 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.  

 

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. 

 

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

• 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 November 22, 2019 for

U.S. Trademark Application Serial No. 88499463

 

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. 

 

 

 /Andrea Butler/

Trademark Attorney

Law Office 124

571-272-7491

andrea.butler@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 November 22, 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.”