To: | BioTherm Hydronic, Inc. (derek@westberglaw.com) |
Subject: | U.S. Trademark Application Serial No. 88512371 - BIOTHERM - BIO-01000 |
Sent: | January 21, 2020 12:13:16 PM |
Sent As: | ecom128@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88512371
Mark: BIOTHERM
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Correspondence Address: |
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Applicant: BioTherm Hydronic, Inc.
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Reference/Docket No. BIO-01000
Correspondence Email Address: |
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COMBINED EXAMINER’S AMENDMENT/PRIORITY ACTION 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: January 21, 2020
This Office action is in response to applicant’s communication filed on January 9, 2019. Based on information and/or documentation in applicant’s response, the trademark examining attorney now issues the following new refusal: Activities Are Not Registrable Services According to Specimen. See TMEP §§706, 711.02.
In a previous Office action dated October 2, 2019, the applicant was required to satisfy the following requirement: amend the identification of goods.
Applicant must address issues shown below. On January 16, 2020, the examining attorney and Mr. Derek J. Westberg, Esq. discussed the issue below. Applicant must timely respond to these issues. See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §708.05.
Activities Are Not Registrable Services According to Specimen Refusal
THIS PARTIAL REFUSAL APPLIES TO INTERNATIONAL CLASS 042 ONLY
The activities set forth as services in an application are reviewed using the following criteria to determine whether they constitute registrable services:
(1) A service is a real activity, not an idea, concept, process, or system.
(2) A service is performed primarily for the benefit of someone other than the applicant.
(3) A service is an activity that is sufficiently separate and qualitatively different from an applicant’s principal activity, i.e., it cannot be an activity that is merely incidental or necessary to an applicant’s larger business.
TMEP §1301.01(a); see In re Dr Pepper Co., 836 F.2d 508, 509-510, 5 USPQ2d 1207, 1208-1209 (Fed. Cir. 1987); In re Canadian Pac. Ltd., 754 F.2d 992, 994-95, 224 USPQ 971, 973 (Fed. Cir. 1985).
In this case, the description set forth in the identification of services is as follows: “design of heating systems, cooling systems, irrigation systems, air conditioning systems, and nutrient management systems.” The specimen indicates that these activities are not registrable services because the specimen merely indicates applicant “has been at the forefront of developing highly efficient greenhouse solutions” and does not make clear that applicant performs the recited systems in International Class 042 for the benefit of others (e.g., custom designs and/or manufactures to customer specifications). The “design of heating systems, cooling systems, irrigation systems, air conditioning systems, and nutrient management systems” for the primary benefit of itself to provide as goods to others is not a registerable service under 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. Applicant may also respond to this refusal by submitting a substitute specimen or amending applicant’s basis to intent to use under Section 1(b) for each applicable international class.
Submitting a Substitute Specimen:
Applicant may submit a substitute specimen that shows the applied-for mark used in commerce as a service mark for the services in the application, and the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “The substitute specimen was in use in commerce at least as early as the filing date of the application.” 37 C.F.R. §2.59(a); TMEP §904.05; see 37 C.F.R. §2.193(e)(1). If submitting a substitute specimen requires an amendment to the dates of use, applicant must also verify the amended dates. 37 C.F.R. §2.71(c); TMEP §904.05.
Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and webpages that show the mark used in the actual sale, rendering, or advertising of the services. See TMEP §1301.04(a), (h)(iv)(C). Specimens comprising advertising and promotional materials must show a direct association between the mark and the services. TMEP §1301.04(f)(ii).
Amending to Section 1(b)
If applicant cannot provide an acceptable substitute specimen, applicant may amend the application basis to intent to use under Section 1(b), for which no specimen is required, and the refusal will be withdrawn. See TMEP §806.03(c). However, if applicant amends the basis to Section 1(b), registration will not be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen. See 15 U.S.C. §1051(c), (d); 37 C.F.R. §§2.76, 2.88; TMEP §1103. If the same specimen is submitted with an allegation of use, the same refusal will likely issue.
To amend to Section 1(b), applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “Applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date.” 37 C.F.R. §2.34(a)(2); TMEP §806.01(b); see 15 U.S.C. §1051(b); 37 C.F.R. §§2.35(b)(1), 2.193(e)(1).
Response guidelines. For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
Partial Abandonment Advisory
If applicant does not timely respond to this Office action, the following class will be deleted from the application:
See 37 C.F.R. §2.65(a); TMEP §718.02(a).
In such case, the application will then proceed with the following classes only:
See TMEP §718.02(a).
Application has been amended as shown below. As agreed to on January 20, 2020 by the individual identified in the Priority Action section, the examining attorney has amended the application as shown below. Please notify the examining attorney immediately of any objections. TMEP §707. In addition, applicant is advised that amendments to the goods are permitted only if they clarify or limit them; amendments that add to or broaden the scope of the goods are not permitted. 37 C.F.R. §2.71(a).
Amendment to Identification of Goods
The identification of goods is amended to read as follows:
“Heating systems comprised of boilers, heat exchangers, pumps, distribution piping, and components thereof, namely, thermal transfer tubing array, tubing and distribution headers therefor; heating systems comprised of boilers, heat exchangers, pumps, distribution piping, and components thereof, namely, thermal transfer tubing array, tubing and distribution headers therefor for horticultural use; environmental control equipment in the nature of heating systems comprised of boilers, heat exchangers, pumps, distribution piping, and components thereof, namely, thermal transfer tubing array, tubing and distribution headers therefor for greenhouses; environmental control equipment in the nature of hydronic water chillers, dehumidifiers and CO2 gas generators for greenhouses; environmental control equipment in the nature of heating systems comprised of boilers, heat exchangers, pumps, distribution piping, and components thereof, namely, thermal transfer tubing array, tubing and distribution headers therefor for horticultural use; environmental control equipment in the nature of hydronic water chillers, dehumidifiers and carbon dioxide gas generators and diffusers for horticultural use; water treatment equipment, namely, apparatus in the nature of gas infusers for treatment of irrigation water by increasing its dissolved oxygen content; apparatus for heating irrigation water, namely, hot water heating installations; apparatus for cooling irrigation water, namely, irrigation water chillers and cooling installations for water; oxygen generators for processing water by increasing oxygen content in the water; water treatment equipment in the nature of irrigation water chillers; water treatment equipment in the nature of apparatus for infusing gas into liquid for treating irrigation water; water treatment equipment in the nature of gas infusers for treatment of irrigation water; water treatment equipment for treating irrigation water in the nature of gas infusers for infusing oxygen into water used for irrigating crops and plants; dehumidifiers for horticultural use; air conditioning apparatus for horticultural use; carbon dioxide enhancement systems in the nature of carbon dioxide generators and diffusers for horticultural use” in International Class 011
See TMEP §§1402.01, 1402.01(e).
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. 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.
Christopher Hoffman
/Christopher Hoffman/
Trademark Examining Attorney
Law Office 128
(571)272-3351
christopher.hoffman@uspto.gov
RESPONSE GUIDANCE