| To: | Element Brand Holding, LLC (david.b@ohcbrands.com) |
| Subject: | U.S. Trademark Application Serial No. 88512330 - E ELEMENT ELECTRONICS - N/A |
| Sent: | October 12, 2019 08:11:07 PM |
| Sent As: | ecom103@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88512330
Mark: E ELEMENT ELECTRONICS
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Correspondence Address:
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Applicant: Element Brand Holding, LLC
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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: October 12, 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
Search Results – No Conflicting Marks Found for Certain Goods in this Application
With respect to ALL goods OTHER THAN “Dish washing machines; washing machines for clothes;” “electrical cleaning devices, namely, carpet, bare floor, and upholstery cleaning extractors and vacuum cleaners; accessories for cleaning extractors and vacuum cleaners, namely, hoses, brushes and wands; vacuum cleaner bags; vacuum cleaner belts;” and “electric milk frothers,” Applicant is advised as follows
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
Trademark Act Section 2(d) – Likelihood of Confusion
Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties. See 15 U.S.C. §1052(d). Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). Only those factors that are “relevant and of record” need be considered. M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018).
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.
1. Likelihood of Confusion with Reg. No. 4,176,179
The following refusal is issued with respect to the goods identified as “Dish washing machines; washing machines for clothes;” “electrical cleaning devices, namely, carpet, bare floor, and upholstery cleaning extractors and vacuum cleaners; accessories for cleaning extractors and vacuum cleaners, namely, hoses, brushes and wands; vacuum cleaner bags; vacuum cleaner belts.”
Applicant seeks registration of E ELEMENT ELECTRONICS and Design for goods that include “Dish washing machines; washing machines for clothes;” “electrical cleaning devices, namely, carpet, bare floor, and upholstery cleaning extractors and vacuum cleaners; accessories for cleaning extractors” and vacuum cleaners, namely, hoses, brushes and wands; vacuum cleaner bags; vacuum cleaner belts.” The mark ELEMENT in Reg. NO. 4,176,179 for goods identified as cleaning systems which comprise a central vacuum unit and connected conduits and cleaning nozzles and parts therefor and a cleaning kit comprised of a turbine-powered or electric nozzle, wands, hoses, brushes and attachment caddy has been cited as a bar against registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d).
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).
The Applicant’s mark and the Registrant’s mark create similar commercial impressions because the Applicant’s mark amounts to an appropriation of the Registrant’s mark in its entirety with the addition of the descriptive word “electronics” and a highly stylized design of the letter “E.” Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).
The addition of the term “Electronics” to the mark in this application is insufficient to distinguish it from the cited mark and avoid a likelihood of confusion. The dominant portion of the mark in this application is ELEMENT, which is identical to the mark in the cited registration. Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Greater weight is often given to this dominant feature when determining whether marks are confusingly similar. See In re Detroit Athletic Co., 903 F.3d at 1305, 128 USPQ2d at 1050 (citing In re Dixie Rests., 105 F.3d at 1407, 41 USPQ2d at 1533-34).
Marks must be compared in their entireties and should not be dissected; however, a trademark examining attorney may weigh the individual components of a mark to determine its overall commercial impression. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (“[Regarding the issue of confusion,] there is nothing improper in stating that . . . more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties.” (quoting In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985)).
In addition, the design of the letter “E” in the mark in this application is so highly stylized that it would be considered a design element in the mark. When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).
Finally, because the Applicant’s mark consists of the Registrant’s mark in its entirety with the addition of the descriptive word “electronics” and a highly stylized design of the letter E,” there is the concern that consumers may mistakenly associate the Registrant’s goods with the Applicant. The Trademark Act not only guards against the misimpression that the senior user is the source of a junior user’s goods and/or services, but it also protects against “reverse confusion,” where a significantly larger or prominent junior user is perceived as the source of a smaller, senior user’s goods and/or services such that the “senior user may experience diminution or even loss of its mark’s identity and goodwill due to extensive use of a confusingly similar mark by the junior user” for related goods and/or services. In re i.am.symbolic, llc, 866 F.3d 1315, 1329, 123 USPQ2d 1744, 1752 (Fed. Cir. 2017) (quoting In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993)); Fisons Horticulture, Inc. v. Vigoro Indust., Inc., 30 F.3d 466, 474-75, 31 USPQ2d 1592, 1597-98 (3d Cir. 1994).
When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b). Such consumers are likely to be confused by the use of such similar marks on closely related goods.
When analyzing an applicant’s and registrant’s goods and/or services for similarity and relatedness, that determination is based on the description of the goods and/or services in the application and registration at issue, not on extrinsic evidence of actual use. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)).
In this case, the registration(s) use(s) broad wording to describe its goods, including cleaning systems with a central vacuum unit and connected conduits and cleaning nozzles and parts therefor and a cleaning kit with a turbine-powered or electric nozzle, wands, hoses, brushes and attachment caddy. This wording must be presumed to include all such items, including the Applicant’s cleaning extractors and vacuum cleaners, as well as their hoses, wands, and brushes. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, applicant’s and registrant’s goods are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
Additionally, the goods and/or services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Thus, applicant’s and registrant’s goods and/or services are related.
In addition, the Applicant’s dish washing machines, washing machines for clothes, vacuum cleaner bags and vacuum cleaner belts and the Registrant’s vacuum cleaners are of a type that are available from the same source, under the same brand name, and/or through the same channels of trade:
Miele
Dishwashers, Washing Machines, Vacuum Cleaners - http://www.mieleusa.com/?gclid=EAIaIQobChMI_6ei3buX5QIVxp-zCh0KXALLEAAYAyAAEgLDb_D_BwE
Vacuum Accessories –Bags - http://www.mieleusa.com/domestic/vacuum-cleaner-accessories-1839.htm
Kenmore
Vacuum Cleaners - http://www.kenmore.com/products/floor-care/vacuum-cleaners/\
Vacuum Cleaner Parts and Accessories – Bags - http://www.kenmore.com/products/floor-care/floor-care-parts-and-accessories/ and Belts - http://www.kenmore.com/products/floor-care/floor-care-parts-and-accessories/
Dishwashers - http://www.kenmore.com/products/dishwashers/
Clothes Washers - http://www.kenmore.com/products/laundry/washers/
Electrolux
Vacuum Cleaners -http://www.electroluxappliances.com/Search-Results/?q=vacuum cleaners
Vacuum Cleaner Parts and Accessories- bags and belts - http://www.electroluxappliances.com/Search-Results/?c=accessories&q=vacuum cleaners
Dishwashers - http://www.electroluxappliances.com/Kitchen-Appliances/Dishwashers/Dishwasher/
Clothes Washers - http://www.electroluxappliances.com/Washers-Dryers/Washing-Machines/Washing-Machine/
(See attached printouts). This attached Internet evidence establishes that the same entity commonly manufactures, produces, or provides the relevant goods and/or services and markets the goods and/or services under the same mark and/or that the relevant goods and/or services are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use. Thus, applicant’s and registrant’s goods and/or services are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
Inasmuch as the marks are similar and the goods are related, a likelihood of confusion exists.
The following refusal is issued with respect to the goods identified as “electric milk frothers.”
Applicant seeks registration of E ELEMENT ELECTRONICS and Design for goods that include electric milk frothers The mark ELEMENTI in Reg. No. 5,458,096 for goods that include electric milk frothers has been cited as a bar against registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d).
The Applicant’s mark and the Registrant’s mark create similar commercial impressions because they have the same meaning. Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).
As demonstrated by the attached printout from Glosbe - http://glosbe.com/it/en/elementi. “elementi” is an Italian word that means “element” in English.
The registrant’s mark is in Italian, which is a common, modern language in the United States. See In re Ithaca Indus., Inc., 230 USPQ 702 (TTAB 1986) (Italian). The doctrine is applied when “the ordinary American purchaser” would “stop and translate” the foreign term into its English equivalent. Palm Bay, 396 F.3d at 1377, 73 USPQ2d at 1696 (quoting In re Pan Tex Hotel Corp., 190 USPQ 109, 110 (TTAB 1976)); TMEP §1207.01(b)(vi)(A). The ordinary American purchaser includes those proficient in the foreign language. In re Spirits Int’l, N.V., 563 F.3d 1347, 1352, 90 USPQ2d 1489, 1492 (Fed. Cir. 2009); see In re Thomas, 79 USPQ2d at 1024.
In this case, the ordinary American purchaser would likely stop and translate the mark because the Italian language is a common, modern language spoken by an appreciable number of consumers in the United States.
The addition of the term “Electronics” to the mark in this application is insufficient to distinguish it from the cited mark and avoid a likelihood of confusion. The dominant portion of the mark in this application is ELEMENT, which is identical to the mark in the cited registration. Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Greater weight is often given to this dominant feature when determining whether marks are confusingly similar. See In re Detroit Athletic Co., 903 F.3d at 1305, 128 USPQ2d at 1050 (citing In re Dixie Rests., 105 F.3d at 1407, 41 USPQ2d at 1533-34).
Marks must be compared in their entireties and should not be dissected; however, a trademark examining attorney may weigh the individual components of a mark to determine its overall commercial impression. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (“[Regarding the issue of confusion,] there is nothing improper in stating that . . . more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties.” (quoting In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985)).
The inclusion of the design of the letter “E” in the mark in this application is insufficient to distinguish it from the Registrant’s mark and avoid a likelihood of confusion. The presentation of the letter “E” in this mark is so highly stylized that it would be considered a design mark by consumers. When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).
When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b). Such consumers are likely to be confused by the use of such similar marks on identical goods.
In this case, the goods and/or services in the application and registration(s) are identical. Therefore, it is presumed that the channels of trade and class(es) of purchasers are the same for these goods and/or services. See Cai v. Diamond Hong, Inc., __ F.3d __, 27 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)). Thus, applicant’s and registrant’s goods and/or services are related.
Inasmuch as the marks are similar and the goods are related, a likelihood of confusion exists.
Identification of Goods for Class 7
In particular, the underlined wording in bold in the identification of goods is at issue:
Dish washing machines; washing machines for clothes; garbage disposals; waste compactors; sealed units in the nature of sealed compressors for refrigerators and parts, pieces, and fittings thereof; electrical cleaning devices, namely, carpet, bare floor, and upholstery cleaning extractors and vacuum cleaners; accessories for cleaning extractors and vacuum cleaners, namely, hoses, brushes and wands; vacuum cleaner bags; vacuum cleaner belts; hermetic compressors for refrigeration, parts, fittings, pieces, accessories being parts of hermetic compressors and components thereof; machines for use in the processing or preparation of food and beverage; cleaning appliances utilizing steam; Aerated beverage making machines; Air-cooled condensers; Apparatus for aerating beverages; Beverage preparation machines, electromechanical; Blades for electric food processors; Bread cutting machines; Can openers, electric; Centrifugal compressors; Centrifugal fan condensers; Coffee grinders, other than hand-operated; Components for machines and machine tools, grinding machines, material handling machines, food processing machines, chemistry processing machines and textile industry machines, namely, sand, chemical and reverse osmosis filters; Compressors as parts of machines, motors and engines; Crushers for kitchen use, electric; Electric can openers; Electric cherry pit removing machines; Electric coffee grinders; Electric flour sifters; Electric food blenders; Electric food blenders; Electric food choppers; Electric food grinders; Electric food grinders for domestic use; Electric food preparation apparatus, namely, tumblers for marinating food; Electric food processors; Electric food slicers; Electric fruit peelers; Electric fruit presses; Electric fruit presses for household use; Electric fruit squeezers for household purposes; Electric garlic peeling machines; Electric graters; Electric hand-held mixers for household purposes; Electric ice crushers; Electric juice extractors; Electric juicers; Electric knife sharpeners; Electric knives; Electric meat grinders; Electric milk frothers; Electric mixers; Electric pasta makers for domestic use; Electric pasta makers for household purposes; Electric pasta making machines; Electric pepper mills; Electric pizza cutters; Electric vacuum food sealers for household purposes; Electric vegetable peelers; Electric whisks for household purposes; Electrical coffee grinders; Electrical juice extractors for fruit; Electrical squeezers for fruit and vegetable; Food processors, electric; Fruit core removing machines; Fruit presses, electric, for household purposes; Grating machines for vegetables; Hand-held electric-powered food processors; Heat exchangers being parts of machines; Juice extractors, electric; Juice machines; Kitchen grinders, electric; Kitchen machines, namely, electric standing mixers; Knife grinding machines; Knives, electric; Machines, namely, wine presses; Meat and food grinder attachments for electric mixers for household use; Meat processing machines; Multi-purpose, electric countertop food preparation apparatus, namely, a combination meat tenderizer and marinator, for household use; Non-aerated beverage making machines; Pasta making machines, electric; Pepper mills, other than hand-operated; Power-operated coffee grinders; Power-operated meat grinders; Reciprocating compressors; Soda-pop making machines; Tea processing machines; Vegetable core removing machines; Vegetable grating machines; Vegetable spiralizers, electric; Whisks, electric, for household purposes
Applicant may adopt the following format for amending the indefinite wording in the identification, if accurate:
“Sealed units in the nature of sealed compressors for refrigerators and parts, pieces, and fittings thereof;” should be amended to “Sealed units in the nature of sealed compressors for refrigerators and structural and component parts, pieces and fittings therefor;” in Class 7. This wording is consistent with the Applicant’s copending Application Nos. 88299611; 88299608; 88299602; 88299596; 88299593; and 88299584
“Machines for use in the processing or preparation of food and beverage;” should be amended to “machines for use in the processor or preparation of food and beverage, namely, electric food processors and beverage processing machines;” in Class 7
“Electric food blenders” is listed twice in the identification of goods. Applicant is advised to delete or modify the duplicate entry in the identification of goods and/or services in International Class 7 for “electric food blenders.” See generally TMEP §§1402.01, 1402.01(a). If applicant does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration.
If the proposed amendments are acceptable and if the Applicant wishes simply to delete the duplicate listing of “electric food blenders,” then the identification of goods for Class 7 should be amended to:
Dish washing machines; washing machines for clothes; garbage disposals; waste compactors; Sealed units in the nature of sealed compressors for refrigerators and structural and component parts, pieces and fittings therefor; electrical cleaning devices, namely, carpet, bare floor, and upholstery cleaning extractors and vacuum cleaners; accessories for cleaning extractors and vacuum cleaners, namely, hoses, brushes and wands; vacuum cleaner bags; vacuum cleaner belts; hermetic compressors for refrigeration, parts, fittings, pieces, accessories being parts of hermetic compressors and components thereof; machines for use in the processing or preparation of food and beverage, namely, electric food processors and beverage processing machines; cleaning appliances utilizing steam; Aerated beverage making machines; Air-cooled condensers; Apparatus for aerating beverages; Beverage preparation machines, electromechanical; Blades for electric food processors; Bread cutting machines; Can openers, electric; Centrifugal compressors; Centrifugal fan condensers; Coffee grinders, other than hand-operated; Components for machines and machine tools, grinding machines, material handling machines, food processing machines, chemistry processing machines and textile industry machines, namely, sand, chemical and reverse osmosis filters; Compressors as parts of machines, motors and engines; Crushers for kitchen use, electric; Electric can openers; Electric cherry pit removing machines; Electric coffee grinders; Electric flour sifters; Electric food blenders; Electric food choppers; Electric food grinders; Electric food grinders for domestic use; Electric food preparation apparatus, namely, tumblers for marinating food; Electric food processors; Electric food slicers; Electric fruit peelers; Electric fruit presses; Electric fruit presses for household use; Electric fruit squeezers for household purposes; Electric garlic peeling machines; Electric graters; Electric hand-held mixers for household purposes; Electric ice crushers; Electric juice extractors; Electric juicers; Electric knife sharpeners; Electric knives; Electric meat grinders; Electric milk frothers; Electric mixers; Electric pasta makers for domestic use; Electric pasta makers for household purposes; Electric pasta making machines; Electric pepper mills; Electric pizza cutters; Electric vacuum food sealers for household purposes; Electric vegetable peelers; Electric whisks for household purposes; Electrical coffee grinders; Electrical juice extractors for fruit; Electrical squeezers for fruit and vegetable; Food processors, electric; Fruit core removing machines; Fruit presses, electric, for household purposes; Grating machines for vegetables; Hand-held electric-powered food processors; Heat exchangers being parts of machines; Juice extractors, electric; Juice machines; Kitchen grinders, electric; Kitchen machines, namely, electric standing mixers; Knife grinding machines; Knives, electric; Machines, namely, wine presses; Meat and food grinder attachments for electric mixers for household use; Meat processing machines; Multi-purpose, electric countertop food preparation apparatus, namely, a combination meat tenderizer and marinator, for household use; Non-aerated beverage making machines; Pasta making machines, electric; Pepper mills, other than hand-operated; Power-operated coffee grinders; Power-operated meat grinders; Reciprocating compressors; Soda-pop making machines; Tea processing machines; Vegetable core removing machines; Vegetable grating machines; Vegetable spiralizers, electric; Whisks, electric, 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.
Partial Abandonment Advisory
Dish washing machines;
Washing machines for clothes;
Electrical cleaning devices, namely, carpet, bare floor, and upholstery cleaning extractors and Vacuum cleaners;
Accessories for cleaning extractors and vacuum cleaners, namely, hoses, brushes and wands; Vacuum cleaner bags;
Vacuum cleaner belts;
Electric milk frothers
Sealed units in the nature of sealed compressors for refrigerators and parts, pieces, and fittings thereof
Machines for use in the processing or preparation of food and beverage
and
The duplicate listing of “electric food blenders” will be deleted
The application will then proceed with the remaining goods in International Class(es) 7. See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).
Assistance
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
/Susan A. Richards/
Susan A. Richards
Trademark Examining Attorney
Law Office 103
(571) 27 2-8266
Susan.Richards@uspto.go
RESPONSE GUIDANCE
