To: | ArcelorMittal Dofasco Inc. (dctm@pillsburylaw.com) |
Subject: | U.S. Trademark Application Serial No. 88515000 - OUR PRODUCT IS STEEL. OUR STRENGTH - 33056-505996 |
Sent: | October 08, 2019 01:46:14 PM |
Sent As: | ecom106@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88515000
Mark: OUR PRODUCT IS STEEL. OUR STRENGTH
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Correspondence Address: PILLSBURY WINTHROP SHAW PITTMAN, LLP
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Applicant: ArcelorMittal Dofasco Inc.
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Reference/Docket No. 33056-505996
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 08, 2019
The referenced application has been reviewed by the assigned trademark examining attorney.
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).
However, 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.
Identification and Classification of Goods Requires Amendment
Commas, semicolons, and apostrophes are the only punctuation that should be included in an identification. Other punctuation, such as colons, question marks, exclamation points, and periods should not be used in an identification. In addition, symbols, such as asterisks (*), at symbols (@), or carets should not be included in the identification. TMEP §1402.01(a).
Applicant may adopt the following wording, if accurate:
International Class 1: Zinc oxide for industrial purposes, namely, zinc and zinc/aluminum oxide used as a feed stock in non ferrous metal production;
International Class 6: Unwrought and partially wrought common metals and their alloys, namely, carbon and alloy steel plate, and hot rolled steel, flat steel in coil and sheet form; cold rolled flat steel in coil and sheet form; flat rolled steel in coil and sheet form, namely, tin plated steel and tin mill blackplate; flat rolled steel in coil and sheet form, namely, zinc coated galvanized steel and zinc/aluminum alloy coated steel; flat rolled steel in coil and sheet form, namely, vitreous enamelling steel; flat rolled steel in coil and sheet form, namely, chromium coated tinfree steel; flat rolled steel in coil and sheet form, namely, zinc/zinc alloy coated steel; flat rolled steel in coil and sheet form, namely, surface textured, roll embossed steel; hot, cold rolled, zinc coated and zinc/aluminum alloy coated steel tubes for use in subsequent forming and fabricating such as automotive frames and the like; cast pig iron; case iron scrap, namely, beach iron, cold iron, runner scrap and ferrous scrap used as a raw material in iron and steel refining processes; solid residue from tin plating composed primarily of tin and used as feed stock in the manufacture of tin plating electrodes
Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended. See TMEP §1402.06(a)-(b). The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification. TMEP §§1402.06(b), 1402.07(a)-(b). Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted. TMEP §1402.07(e).
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.
Multiple Class Application Requirements
The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 44:
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in at least 2 classes; however, applicant submitted a fee(s) sufficient for only 1 class. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See an overview of the requirements for Section 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
Identification of Goods in U.S. Application Exceeds Scope of Foreign Registration
In this case, the U.S. application identifies the particular goods and/or services as follows: “cast pig iron; case iron scrap, namely, beach iron, cold iron, runner scrap and ferrous scrap used as a raw material in iron and steel refining processes; zinc and zinc/aluminum oxide used as a feed stock in non ferrous metal production; and solid residue from tin plating composed primarily of tin and used as feed stock in the manufacture of tin plating electrodes.”
However, the foreign registration does not include these goods. These goods in the U.S. application exceed the scope of the goods and/or services in the foreign registration because they are not listed in the foreign registration or encompassed by goods listed in the foreign registration. Thus, these goods and/or services in the U.S. application are not acceptable and may not be amended to correspond with the goods and/or services in the foreign registration.
Applicant may respond to this issue by satisfying one of the following:
(1) Amending the identification of goods and/or services in the U.S. application to correspond to the goods and/or services in the foreign registration, if possible, to ensure that all goods and/or services beyond the scope of the foreign registration are deleted from the U.S. application; or
(2) Substituting a basis under Section 1(a) or 1(b) for those goods and/or services in the U.S. application that are beyond the scope of the foreign registration. An applicant may assert more than one basis in an application (except Section 1(a) and 1(b) may not be asserted for the same goods and/or services), provided all requirements are satisfied for each claimed basis.
See 15 U.S.C. §§1051(a)-(b), 1126; 37 C.F.R. §§2.32(a)(6), 2.34(b), 2.35(b); Marmark Ltd. v. Nutrexpa S.A., 12 USPQ2d 1843, 1845 (TTAB 1989); TMEP §§806.02, 806.03(h), 1402.01(b).
Additionally, applicant may respond by arguing that these goods and/or services are within the scope of the foreign registration and should remain in the U.S. application.
Owner of Foreign Registration Differs
In an application filed solely under Section 44(e), the applicant must be the owner of the foreign registration on the filing date of the U.S. application. TMEP §1005; see 37 C.F.R. §2.34(a)(3); In re De Luxe, N.V., 990 F.2d 607, 609, 26 USPQ2d 1475, 1477 (Fed. Cir. 1993); In re Tong Yang Cement Corp., 19 USPQ2d 1689, 1690-91 (TTAB 1991). However, in this case, the foreign registration specifies an owner other than the U.S. applicant. Specifically, the U.S. application sets forth the owner as ArcelorMittal Dofasco Inc., a corporation of Canada, while the foreign registration sets forth the owner as ArcelorMittal Dofasco G.P., which appears to indicate a partnership entity. Moreover, the foreign registration references an assignment from ArcelorMittal Dofasco Inc. to ArcelorMittal Dofasco G.P. in January 2016.
If applicant can prove the foreign registration was assigned to applicant on or before the filing date of the U.S. application, the Section 44(e) basis can remain in the application. See TMEP §1005. Applicant may establish ownership of the foreign registration by submitting (1) a copy of an assignment document, (2) certification from the foreign trademark office that reflects applicant’s ownership of the foreign registration and the date of the assignment, or (3) a printout from the intellectual property’s office website that shows the foreign registration was assigned to applicant on or before the filing date of the U.S. application. See TMEP§§1005, 1006.
If applicant did not own the foreign registration on or before the filing date of the U.S. application, applicant will have to amend to an acceptable basis, such as Section 1(a) or 1(b). See TMEP §§806.03, 1005. A foreign registration certificate is not required for a Section 1(a) or 1(b) basis. See 15 U.S.C. §1051(a)-(b); TMEP §806.01(a)-(b).
In this case, applicant must disclaim the wording “OUR PRODUCT IS STEEL” because it is not inherently distinctive. These unregistrable term(s) at best are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
Specifically, this wording is merely a descriptive slogan as it immediately informs consumers that applicant’s products are steel. If a mark consists entirely of a slogan that is generic, merely descriptive, merely informational, or that is otherwise not being used as a mark, registration must be refused. See In re Carvel Corp., 223 USPQ 65 (TTAB 1984) (holding AMERICA’S FRESHEST ICE CREAM for flavored ices, ice cream, etc., incapable of distinguishing applicant’s goods and unregistrable on the Supplemental Register); In re Wakefern Food Corp., 222 USPQ 76 (TTAB 1984) (holding WHY PAY MORE! for supermarket services to be an unregistrable common commercial phrase); see TMEP 1213.05(b)(iii).
If an unregistrable slogan is a component of a mark with registrable matter, the examining attorney must require that the slogan be disclaimed
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “OUR PRODUCT IS STEEL” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
Response Guidelines
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
/Leslie L. Richards/
U.S. Patent and Trademark Office
Trademark Examining Attorney, Law Office 106
571-272-1256
leslie.richards@uspto.gov
RESPONSE GUIDANCE