Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

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:  November 18, 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.

 

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:

• Amended Description of Mark Required
• Amendment to Identification and Classification of Services Required
• Disclaimer of “CARWASH SERVICES OF ARIZONA”, “EQUIPMENT”, “SERVICE” and “CHEMICAL”  Required

 

1. AMENDED DESCRIPTION OF MARK REQUIRED

 

Applicant must submit an amended description of the mark because the current one is incomplete and does not describe all the significant aspects of the mark.  37 C.F.R. §2.37; see TMEP §§808.01, 808.02.  Descriptions must be accurate and identify all the literal and design elements in the mark.  See 37 C.F.R. §2.37; TMEP §§808 et seq. 

 

In this case, applicant describes the mark as: “The mark consists of the words "CARWASH SERVICES OF ARIZONA" in blue and gray and below is the words "EQUIPMENT SERVICE CHEMICAL" in white with a blue background and separated by two white four sided stars, all outlined with a blue boarder. Above is a design of a blue car with white bubbles outlined in blue and the car is being sprayed by five water sprayers with a blue background.”  The description of mark does not specify the specific color of the words "CARWASH SERVICES OF ARIZONA", the description of the outline is vague and it does not conform with the Office’s standard description formatting.

 

The following description is suggested, if accurate:  The mark consists of design of a blue car with lighter and darker blue shading and detailing with white windows with gray shading, white hubcaps, blue wheels, and white headlights outlined in blue, being sprayed by five white water sprays with a blue background below two semi circles, the outermost in blue and the innermost in white.  The car is partially surrounded by white bubbles outlined in blue and has six white four-sided stars representing glints of light on its surface.  Below is the word "CARWASH” in blue font above the words “SERVICES” in blue font and “OF ARIZONA" in gray font, all above a quadrilateral with a blue border and white background.  Below are the words "EQUIPMENT SERVICE CHEMICAL" in white font separated by two white four sided stars on a shaded blue quadrilateral.

 

Applicant must also respond to the requirements set forth below.

 

2. AMENDMENT TO IDENTIFICATION AND CLASSIFICATION OF SERVICES REQUIRED

 

The identification of services must be amended because it includes wording that is indefinite, overly broad, or could be classified in other classes, as further explained below.

 

Applicant used the following identification in its application:

 

Automobile detailing; Vehicle detailing; training services in the field of carwash equipment repair and preventative maintenance of carwash equipment and detailing of automobiles; Consulting services; build, maintain and repair carwashes; Wholesale and retail store in the field of cleaning products; distribution and sales of carwash and detailing equipment

 

Misclassification:  Applicant has classified the following services in International Class 37:  “training services in the field of carwash equipment repair and preventative maintenance of carwash equipment and detailing of automobiles”, “wholesale and retail store in the field of cleaning products”, and “distribution and sales of carwash and detailing equipment.”

 

However, the proper classification for each item is as follows: 

 

“Training services in the field of carwash equipment repair and preventative maintenance of carwash equipment and detailing of automobiles” is in International Class 41

 

“Wholesale and retail store in the field of cleaning products” is in International Class 35.  

 

“Distribution and sales of carwash and detailing equipment” in indefinite and misclassified.  The identification for “distribution services” in International Class 37 must be clarified because it is indefinite and too broad; that is, it does not make clear the nature of the specific services and could identify services in more than one international class.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  Generally, “distribution” refers to delivery-type transportation services in International Class 39 rather than retail-related services in International Class 35.  SeeTMEP §§1401.02(a), 1402.01, 1402.03. 

 

If applicant is engaged in retail-related services, then “distribution” should be amended to “distributorship services in the field of carwash and detailing equipment” in International Class 35, if accurate.  However, if applicant is engaged in delivery-type transportation services, the word “distribution” should be amended to “distribution services, namely, delivery of carwash and detailing equipment” in International Class 39, if accurate. 

 

Further, the word “sales” in the identification of services is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.11.  To be a registrable service, the activity must be primarily for the benefit of someone other than the applicant.  See In re Reichhold Chems., Inc., 167 USPQ 376, 377 (TTAB 1970).  “Sales” or “selling” normally refers to selling one’s own goods or services and is not a registrable service rendered for the benefit of others.  See TMEP §§1301.01(a)(ii), 1402.11.

 

Therefore, applicant must delete “sales” from the identification and indicate with greater specificity the nature of the service in International Class 35; e.g., “retail store services featuring carwash and detailing equipment,” “wholesale distributorships featuring carwash and detailing equipment,” and “on-line wholesale and retail store services featuring carwash and detailing equipment.”

 

Indefinite:  The wording “build, maintain and repair carwashes” in the identification of goods is indefinite and must be clarified because the nature of the services is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “building, maintenance and repair of carwashes.”

 

Consulting:  The word “consulting,” “consultancy,” or “consultation” services in International Class 37 must be clarified because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1402.11(e).  This wording is indefinite because it does not specify the subject matter of the services.  Further, this wording could identify services in more than one international class.  

 

Consulting services are classified according to the subject matter of the consulting service; for example, “business management consultancy” is classified in International Class 35 and “computer technology consultancy” is classified in International Class 42.  TMEP §1402.11(e).  “Consulting services in the field of building a carwash” is classified in International Class 37.

 

Applicant may substitute the following wording, if accurate:  

 

International Class 35:  Wholesale and retail store services in the field of cleaning products; distributorship services in the field of carwash and detailing equipment; retail store services featuring carwash and detailing equipment

 

International Class 37:  Automobile detailing; Vehicle detailing; Consulting services in the field of building a carwash; building, maintenance and repair of carwashes;

 

International Class 39:  Distribution services, namely, delivery of carwash and detailing equipment

 

International Class 41:  Training services in the field of carwash equipment repair and preventative maintenance of carwash equipment and detailing of automobiles

 

Applicant may amend the identification to clarify or limit the services, but not to broaden or expand the services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted services 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.

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

The application references services based on use in commerce in more than one international class; therefore, applicant must satisfy all the requirements below for each international class:

 

(1)        List the services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).

 

(2)        Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule).  Specifically, the application identifies services based on use in commerce that are classified in at least 4 classes; however, applicant submitted a fee sufficient for only 1 class.  Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.

 

(3)        Submit verified dates of first use of the mark anywhere and in commerce for each international class.  See more information about verified dates of use.

 

(4)        Submit a specimen for each international class.  The current specimen is acceptable for class 37; and applicant needs a specimen for classes 35, 39, and 41.  See more information about specimens.

 

            Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and website printouts that show the mark used in the actual sale, rendering, or advertising of the services. 

 

(5)        Submit a verified statement that “The specimen was in use in commerce on or in connection with the services listed in the application at least as early as the filing date of the application.”  See more information about verification.

 

See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).

 

See an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

3. DISCLAIMER OF “CARWASH SERVICES OF ARIZONA”, “EQUIPMENT”, “SERVICE” AND “CHEMICAL”  REQUIRED

 

Applicant must provide a disclaimer of the unregistrable parts of the applied-for mark even though the mark as a whole appears to be registrable.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).  A disclaimer of an unregistrable part of a mark will not affect the mark’s appearance.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).

 

In this case, applicant must disclaim the wording “CARWASH SERVICES OF ARIZONA”, “EQUIPMENT”, “SERVICE,” and “CHEMICAL” because it is not inherently distinctive.  These unregistrable terms are at best merely descriptive and primarily geographically descriptive of applicant’s goods and/or services. 

 

The nondistinctive wording “CARWASH SERVICES”, “EQUIPMENT”, “SERVICE,” and “CHEMICAL” merely describes an function, feature, or purpose of applicant’s 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).

 

The services listed in the application involve a number of CARWASH-related services, such as carwash equipment repair and building carwashes.  Applicant provides several SERVICES involving carwash EQUIPMENT, provides training SERVICES and consulting services, and sells cleaning products, which, by nature, would be CHEMICAL.  The specimen submitted by applicant confirms that, as it specifically has menu items on its website entitled EQUIPMENT, CHEMICALS, and SERVICES and the “Our Services” page specifically lists “Equipment Sales & Installation”, “Service & repairs all brands”, and “Chemical Sales & Service.”  Thus, the aforementioned wording merely describes applicant’s services.

 

In addition, the nondistinctive wording “ARIZONA” is primarily geographically descriptive of the origin of applicant’s services.  See 15 U.S.C. §§1052(e)(2); In re Societe Generale des Eaux Minerales de Vittel S.A., 824 F.2d 957, 959, 3 USPQ2d 1450, 1451-52 (Fed. Cir. 1987); TMEP §§1210.01(a), 1210.06(a), 1213.03(a). 

 

The attached evidence from The American Heritage® Dictionary of the English Language, Fifth Edition, shows that ARIZONA is a generally known geographic place or location.  See TMEP §§1210.02 et seq.  The services for which applicant seeks registration originate in this geographic place as shown by applicant’s address.  See TMEP §1210.03.  Because the services originate in this place, a public association of the services with the place is presumed.  See In re Hollywood Lawyers Online, 110 USPQ2d 1852, 1858 (TTAB 2014) (citing In re Spirits of New Merced, LLC, 85 USPQ2d 1614, 1621 (TTAB 2007)); TMEP §§1210.02(a) 1210.04. 

 

Applicant may respond to this issue by submitting a disclaimer in the following format:

 

No claim is made to the exclusive right to use “CARWASH SERVICES OF ARIZONA”, “EQUIPMENT”, “SERVICE,” and “CHEMICAL” 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: 

 

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.

 

Applicant is encouraged to call or email the assigned trademark examining attorney below to resolve the issues in this Office action.  Although the USPTO will not accept an email as a response to an Office action, an applicant can communicate by phone or email to agree to a proposed amendment to the application that will immediately place the application in condition for publication, registration, or suspension.  See 37 C.F.R. §2.62(c); TMEP §707.

 

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  

 

 

Edward Germick

/Edward J. Germick/

Examing Attorney

Law Office 102

(571) 272-5862

edward.germick@uspto.gov

 

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on November 18, 2019 for

U.S. Trademark Application Serial No. 88558734

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

Edward Germick

/Edward J. Germick/

Examing Attorney

Law Office 102

(571) 272-5862

edward.germick@uspto.gov

 

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from November 18, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond.

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”