| To: | Huizhou Faith Electric Manufacture Co., ETC. (rkimmer@meimark.com) |
| Subject: | U.S. Trademark Application Serial No. 88522013 - FAITH - FTH-0002 |
| Sent: | January 22, 2020 02:46:51 PM |
| Sent As: | ecom128@uspto.gov |
| Attachments: |
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. 88522013
Mark: FAITH
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Correspondence Address:
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Applicant: Huizhou Faith Electric Manufacture Co., ETC.
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Reference/Docket No. FTH-0002
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: January 22, 2020
SEARCH OF OFFICE’S DATABASE OF MARKS
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).
SUMMARY OF ISSUES:
REFUSAL – DRAWING & SPECIMEN – MARK DIFFERS
Please see the requirements below for guidelines on submitting drawings and mark descriptions for three-dimensional configuration trade dress product packaging marks.
Registration is refused because the specimen does not show the mark in the drawing in use in commerce in International Class 009, which is required in the application or amendment to allege use. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a), 1301.04(g)(i). The mark appearing on the specimen and in the drawing must match; that is, the mark in the drawing “must be a substantially exact representation of the mark” on the specimen. See 37 C.F.R. §2.51(a)-(b); TMEP §807.12(a).
The drawing in this application for the three-dimensional trade dress product packaging mark includes additional informational wording that is recommended to be removed from the drawing. Please see the information in the requirements below about amending the drawing for a three-dimensional trade dress product packaging mark.
In this case, the specimen displays the mark as a three-dimensional product package with the mark “FAITH” on the package. The specimen however, does not display all sides of the product packaging and does not provide enough evidence to exactly match the drawing in the mark. Furthermore, the image in the drawing has the wording “WHITE” underneath the main center window while the specimen has the wording “IVORY” under the main center window.
However, the drawing displays the mark as a flat cutout of four panels of the product packaging with all the informational wording in the mark. The mark on the specimen does not match the mark in the drawing because the specimen does not show all aspects of the mark, including all panels and information wording and also would need to show a complete flat cutout of the product packaging to match the drawing. Applicant has thus failed to provide the required evidence of use of the mark in commerce. See TMEP §807.12(a).
Applicant may respond to this refusal by satisfying one of the following:
(1) Submit a new drawing of the mark that shows the mark on the specimen and, if appropriate, an amendment of the description and/or color claim that agrees with the new drawing. See 37 C.F.R. §2.72(a)-(b). Applicant may amend the mark in the drawing to match the mark on the specimen but may not make any other changes or amendments that would materially alter the drawing of the mark. See 37 C.F.R. §2.72(a)-(b); TMEP §807.14.
(2) Submit a different specimen (a verified “substitute” specimen) for each applicable international class that (a) shows the mark in the drawing in actual use in commerce for the goods and/or services in the application or amendment to allege use, and (b) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use.
Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, and displays associated with the actual goods at their point of sale. See TMEP §§904.03 et seq. Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods. TMEP §904.03(i). 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).
For more information about drawings and instructions on how to satisfy these response options online using the Trademark Electronic Application System (TEAS) form, see the Drawing webpage.
ADVISORY – RECOMMENDATIONS FOR A SUBSTITUTE DRAWING FOR TRADE DRESS PRODUCT PACKAGING
Upon response from the applicant, it is recommended that a substitute drawing for trade dress product packaging in this case would include the following only:
These guidelines would obviate the need for the extraneous information indicated in the mark description and in the disclaimer.
Please see TMEP 1202.02(c)(ii) for appropriate examples of descriptions of trade dress marks
REQUIREMENT – DRAWING – MARK IMAGE UNCLEAR
Therefore, applicant must submit a new drawing showing a clear depiction of the mark. All lines must be clean, sharp and solid, and not fine or crowded. 37 C.F.R. §§2.53(c), 2.54(e); TMEP §§807.05(c), 807.06(a). Additionally, the USPTO will not accept a new drawing in which there are amendments or changes that would materially alter the applied-for mark. 37 C.F.R. §2.72; see TMEP §§807.13 et seq., 807.14 et seq.
For more information about drawings and instructions on how to submit a drawing, see the Drawing webpage.
DRAWING – CONFIGURATION MARK – AMENDMENT OF DESCRIPTION NEEDED
Please see TMEP 1202.02(c)(ii) for appropriate examples of descriptions of trade dress marks
(1) Indicates the mark is a three-dimensional configuration of the goods or packaging or of a specific design feature of the goods or packaging.
(2) Specifies all the elements in the drawing that constitute the mark and are claimed as part of the mark.
(3) Specifies any elements that are not part of the mark and indicates that the matter shown in broken or dotted lines is not part of the mark and serves only to show the position or placement of the mark.
See 37 C.F.R. §§2.37, 2.52(b)(2), (b)(4); In re Famous Foods, Inc., 217 USPQ 177, 177 (TTAB 1983); TMEP §§807.08, 807.10, 1202.02(c)(ii).
Advisory – Configuration Mark – Dotted Lines Show Position of Mark
If the applicant chooses to keep the drawing as originally submitted on the original application. The applicant must adopt the following color claim and mark description:
Color Claim: The colors black, charcoal grey, white, and yellow are claimed as a feature of the mark.
Description of the Mark: The mark consists of a three-dimensional product packaging design consisting of four panels with a black background.
The left panel consists of a black background with yellow and charcoal grey diagonal stripes extending from the upper left corner of the panel extending downward to the right. The bottom of the panel is a yellow stripe across the bottom edge. The left panel contains rows wording in yellow text: “Self-Testing”; “GFCI Outlet”; “Specifications”. The following rows of wording in yellow text also have a yellow dot in front of each row of text: “2-pole, 3-wire grounding duplex outlet”; “125V AC only”; “15A at outlet”; “20A feed-through”; “Function indicator light”; “Matching faceplate included”; “Back and side wire”. The bottom has wording in yellow text “GL5-15A-WH”. Above and below the left panel is the outline of white flaps.
The left-center panel consists of a black background with a rectangular window in the middle of the panel represented by the color white. There is a yellow and charcoal grey stripe extending from the middle center of the top of the panel extending downward to the left. In the upper right corner of the panel is the wording “FAITH” in stylized text where the bottom left stem of the “A” is a stylized lightning bolt. Under the wording “FAITH” is the wording “Faith Electric” in white text. To the left of the center window is the following rows of wording in yellow text: “15”; “AMP”; “125V AC 60 Hz”. To the right of the window is the wording “NEW” in white text. Under the wording “NEW” is the wording “SLIMMER DESIGN” in yellow wording. Around the window is a yellow border. To the right of the window is a yellow curved rectangle shape. Within the yellow rectangle, there are three stylized designs with wording under each design. The top design is a stylized clock in black where a curved triangle shape in black is in the top right corner of the stylized clock. Under the stylized clock is the wording in black text “Self-Tests Every 2.5 Hours”. The middle design is a stylized wall plate represented by a black outline, black dots in the middle top center and middle bottom center, and a shaded black rectangle in the middle. Under the stylized wall plate is the wording “Matching Wallplate Included” in black text. The bottom stylized design is a stylized lightbulb in a black circular outline. The stylized black light bulb has five black lines extending out from the perimeter of the light bulb. Bellow the stylized black light bulb is the wording “Function Indicator Light” in black text. Under the window is a charcoal grey shaded rectangular shape with the wording “WHITE” in yellow text. To the left of the charcoal grey rectangle is a white “Intertek” certification mark represented by the stylized letters “ETL” in a white circular outline. To the left of the certification mark is the letter “C” in white text. To the right of the certification mark is the wording “US” in white text. Above the “L” in “ETL” is the letters “TM” in white text. The bottom of the circular line is the wording “LISTED” in white text. Below the design is a white horizontal line. Below the white horizontal line is the wording “Intertek” in white text. Below the wording “Intertek” is the wording “GLS-15A-IV” in yellow text. In the bottom right corner of the panel is two rows of yellow text: “Self-Testing” and “GFCI Outlet”. At the bottom of the panel is a yellow stripe. Above the panel is a yellow panel flap. Above the yellow panel flap is a white panel flap. Below the panel are two white panel flaps.
The right center panel consists of a black background. At the top of the panel is the wording “FAITH” in stylized white text where the bottom left stem of the “A” is a stylized lightning bolt. Under the wording “FAITH” is the wording “FAITH ELECTRIC” in white text. The center of the panel has the following rows of yellow text: “Protects against”; “Electrical Shocks from:”. The following rows of wording have a yellow dot in front of each row: “Frayed wiring”; “Appliances and tools with hazardous leakage levels”; “Contact with dampness using electrical appliances”. Below the rows of wording is a stylized clock in yellow. There is a shaded triangle shape in the upper right portion of the stylized clock. Below the stylized clock is the following rows of yellow text: “Outlet self-tests every 2-1/2 hours”; “to ensure continuous safety”. At the bottom of the panel is a yellow stripe. There are white flaps at the top and bottom of the panel.
The right panel consists of a black background. In the bottom left of the panel is the wording “FAITH” in stylized text where the bottom left stem of the “A” is a stylized lightning bolt. Above the wording “FAITH” is the wording “Manufactured by” in white text. Below the wording “FAITH” is the wording “FAITH ELECTRIC” in white text. At the top of the panel is two rows of yellow wording “Self-Testing”; and “GFCI Outlet”. In the middle of the panel is two rows of yellowing wording: “This is a ground fault”; “circuit interrupter:”. The following paragraphs of white text are below the yellow wording. The first paragraph states “This device replaces a conventional receptacle outlet. Should someone come in contact with a live wire, this GFCI will detect a current leakage as low as 5 milliamps and will shut the power off almost immediately (1/40 of a second).” The second paragraph states “The National Electric Code 8 (NEC8) requires the use of GFCI outlets in kitchens, bathrooms, garages, basements and outdoors.” The third paragraph states “Meets or exceeds UL943 2015 standards.” Below the three paragraphs of white text is the wording “CAUTION:” in yellow text with a stylized yellow warning sign tithe right. Under the wording “CAUTION” is the following rows of white text: “Use this device only with copper or copper”; “clad wire.” “Read and understand installation”; “instructions inside”. In the bottom right corner is the wording “MADE IN CHINA” in yellow text. At the bottom of the panel is a yellow stripe. To the right of the panel is a white flap with three black diagonal lines in the middle of the panel lining from top to bottom. Above the panel are two yellow flaps with the black outlines of a circular band shape. In the upper yellow panel is the upside-down text “FAITH” in stylized white text where the bottom left of the “A” is a stylized lightning bolt. Above the upside-down “FAITH” wording is the upside-down wording “FAITH ELECTRIC”. Above the top yellow flap is a white flap.
REQUIREMENT – DISCLAIMER – INFORMATIONAL WORDING ABOUT APPLICANT’S GOODS
If the applicant chooses to keep all the additional information wording in the drawing, then a disclaimer is required
In this case, applicant must disclaim all the informational wording because it is not inherently distinctive. These unregistrable term(s) at best are merely informational about the goods are commonly used in applicant’s particular trade or industry; thus the term(s) do not function as a mark. See 15 U.S.C. §§1051-1053, 1127; In re Boston Beer Co., 198 F.3d 1370, 1372-74, 53 USPQ2d 1056, 1058-59 (Fed. Cir. 1999); In re Aerospace Optics, Inc., 78 USPQ2d 1861, 1864 (TTAB 2006); TMEP §§807.14(a), 1202.04, 1213.03(a), (b).
Determining whether a term functions as a trademark or service mark depends on how such matter would be perceived by the relevant public. In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229 (TTAB 2010); In re Aerospace Optics, Inc., 78 USPQ2d at 1862; TMEP §1202.04. “The more commonly a [term] is used, the less likely that the public will use it to identify only one source and the less likely that it will be recognized by purchasers as a trademark [or service mark].” In re Hulting, 107 USPQ2d 1175, 1177 (TTAB 2013) (quoting In re Eagle Crest, Inc., 96 USPQ2d at 1229); TMEP §1202.04.
Because consumers are accustomed to seeing this term commonly used by those in the applicant’s industry to impart information to consumers, they will perceive this term or slogan only as informational matter rather than as a trademark or service mark that identifies the source of applicant’s goods.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use:
“Self-Testing”; “GFCI Outlet”; “Specifications”; “2-pole, 3-wire grounding duplex outlet”; “125V AC only”; “15A at outlet”; “20A feed-through”; “Function indicator light”; “Matching faceplate included”; “Back and side wire”; “GL5-15A-WH”; “15”; “AMP”; “125V AC 60 Hz”; “NEW”; “SLIMMER DESIGN”; “Self-Tests Every 2.5 Hours”; “Matching Wallplate Included”; “Function Indicator Light”; “WHITE”; “Intertek”; “ETL”; “C”; “US”; “TM”; “LISTED”; “GLS-15A-IV”; “Self-Testing”; “GFCI Outlet”; “Protects against”; “Electrical Shocks from:”; “Frayed wiring”; “Appliances and tools with hazardous leakage levels”; “Contact with dampness using electrical appliances”; “Outlet self-tests every 2-1/2 hours”; “to ensure continuous safety”; “Manufactured by”; “Self-Testing”; “GFCI Outlet”; “This is a ground fault”; “circuit interrupter:”; “This device replaces a conventional receptacle outlet. Should someone come in contact with a live wire, this GFCI will detect a current leakage as low as 5 milliamps and will shut the power off almost immediately (1/40 of a second).”; “The National Electric Code 8 (NEC8) requires the use of GFCI outlets in kitchens, bathrooms, garages, basements and outdoors.” “Meets or exceeds UL943 2015 standards.” “CAUTION:” “Use this device only with copper or copper”; “clad wire.” “Read and understand installation”; “instructions inside”. “MADE IN CHINA” “Electric”
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
REQUIREMENT – IDENTIFICATION OF GOODS
Applicant must clarify some of the wording in the identification of goods and/or services because it is indefinite. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. Please see the suggested changes below.
“Including” is Open-ended Term
“USB ports”
“ground fault circuit interrupters (GFCIs)”
The wording “ground fault circuit interrupters (GFCIs)” in the identification of goods is indefinite and must be clarified because the identification needs to indicate it is a type of “circuit breaker” which is a definite identification entry. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
“occupancy sensors”
“decorative wall plate and covers for USB ports”
The wording “decorative wall plate and covers for USB ports” in the identification of goods is indefinite and must be clarified because some of the items listed after the entry are indefinite. Covers for electronic and electric goods are in Class 009, but the types of items listed need to be a definite entry from Class 009. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Suggested Changes:
Applicant should note that any wording in bold, in italics, underlined and/or in ALL CAPS below offers guidance and/or shows
the changes being proposed for the identification of goods and/or services. If there is wording in the applicant’s version of the identification of goods and/or
services which should be removed, it will be shown with a line through it such as this: strikethrough. When making
its amendments, applicant should enter them in standard font, not in bold, in italics, underlined or in ALL CAPS.
Applicant may substitute the following wording, if accurate:
Class 009: USB ports, namely, _____ {indicate type of USB ports in Class 009, e.g., USB charging ports, micro USB
ports, USB charging ports for use in vehicles}; circuit breakers, namely, ground fault circuit interrupters
(GFCIs); occupancy sensors, namely, electronic devices which detect the presence of occupants and control the lighting system accordingly;
electric switches, namely, including electric circuit switches and electric light switches; decorative wall plate
covers and covers for USB charging ports, micro USB ports, wall jack for phone and cable connection jack, ground fault circuit interrupters (GFCIs) circuit breakers, occupancy
sensors consisting of an electronic device which detects the presence of occupants and controls the lighting system accordingly, electrical receptacles,
and electrical circuit switches and electrical light switches, sold either separately or in combination as a kit
See TMEP §§1402.01, 1402.03.
An applicant may only amend an identification to clarify or limit the goods, but not to add to or broaden the scope of the goods. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. Generally, any deleted goods may not later be reinserted. See 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.
REQUIREMENT – ENTITY – ISSUE REGARDING APPLICANT’S ENTITY TYPE
The applicant “Huizhou Faith Electric Manufacture Co., Ltd.” lists its entity type as a “CORPORATION” in China.
Alternatively, if applicant maintains that the legal entity in the application properly identifies applicant’s entity type, applicant must provide an explanation as to why the identified entity type is more similar to a “CORPORATION” in this instance than to the legal entities listed in TMEP Appendix D. See id.
If, in response to the above request, applicant provides information indicating that it is not the owner of the mark, registration will be refused because the application was void as filed. See 37 C.F.R. §2.71(d); TMEP §§803.06, 1201.02(b). An application must be filed by the party who owns or is entitled to use the mark as of the application filing date. See 37 C.F.R. §2.71(d); TMEP §1201.02(b).
RESPONSE GUIDELINES
If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney. All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.
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.
Jalandoni, Chad
/Chad C. Jalandoni, Esq./
Trademark Examining Attorney
USPTO, Law Office 128
(571) 272-3329
chad.jalandoni@uspto.gov
RESPONSE GUIDANCE