To: | LG Electronics Inc. (mailroom@bskb.com) |
Subject: | U.S. Trademark Application Serial No. 88501914 - ICE STEAM - 0465-7003US1 |
Sent: | February 19, 2020 08:31:24 PM |
Sent As: | ecom102@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88501914
Mark: ICE STEAM
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Correspondence Address: Birch Stewart Kolasch & Birch LLP 8110 Gatehouse Road, Suite 100E
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Applicant: LG Electronics Inc.
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Reference/Docket No. 0465-7003US1
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: February 19, 2020
Applicant’s response filed on February 10, 2020, is acknowledged by this Office action. Applicant submitted an acceptable amendment to the identification of goods and requested that the application be suspended pending receipt of the foreign registration. The response answered the information request. Two unique features of the goods is the use of ice and steam in the operation of the ovens. Consequently, the proposed mark ICE STEAM is refused registration under Section 2(e)(1) of the Trademark Act because it is descriptive of the goods.
Section 2(e)(1) Refusal
Applicant’s proposed mark is ICE STEAM for ovens that use ice and steam in their operation. Applicant has answered the information request as follows: “When baking the bread, ice is put on the grill pan and is vaporized to generate steam. The generated steam minimizes the water loss inside the bread and keeps the bread soft.” These statements confirm that features of the ovens will include the use of ice and steam thereby making the proposed mark ICE STEAM descriptive of the goods.
In view of the answers to the information request, the examining attorney finds that the proposed mark is merely descriptive of applicant’s goods within the meaning of Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1). Accordingly, registration is refused under Section 2(e)(1) of the Trademark Act. Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.
Foreign Registration
An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016. In addition, an applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law. 15 U.S.C. §1126(b); TMEP §§1002.01, 1004.
Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available. TMEP §1003.04(a). A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin. TMEP §1004.01. If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin. TMEP §1016. In addition, applicant must also provide an English translation if the foreign registration is not written in English. 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b). The translation should be signed by the translator. TMEP §1004.01(b).
If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available. TMEP §§716.02(b), 1003.04(b).
If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely on the Section 1(b) basis. See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b). Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed. See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103. Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration. See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.04(b).
Alternatively, applicant has the option to amend the application to rely solely on the Section 44(e) basis and request deletion of the Section 1(b) basis. See 37 C.F.R. §2.35(b)(1); TMEP §806.04. The foreign registration alone may serve as the basis for obtaining a U.S. registration. See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).
How to respond. Click to file a response to this nonfinal Office action.
/Christopher Buongiorno/
United States Patent & Trademark Office
Law Office 102
(571) 272-9251
christopher.buongiorno@uspto.gov
RESPONSE GUIDANCE