To: | Jiawei Renewable Energy Co., Ltd. (trademarks@rosenbaumip.com) |
Subject: | U.S. Trademark Application Serial No. 88588647 - STAYS BRIGHTER LONGER - 6385-020 |
Sent: | November 21, 2019 01:14:06 PM |
Sent As: | ecom123@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 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88588647
Mark: STAYS BRIGHTER LONGER
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Correspondence Address: |
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Applicant: Jiawei Renewable Energy Co., Ltd.
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Reference/Docket No. 6385-020
Correspondence Email Address: |
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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: November 21, 2019
USPTO database searched; no conflicting marks found. The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d). 15 U.S.C. §1052(d); TMEP §704.02.
Applicant must address issues shown below. On November 21, 2019, the examining attorney and Jason K. Schmitz discussed the issues 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.
SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
Registration is refused because the applied-for mark merely describes a feature, characteristic, or function of applicant’s goods. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.
Applicant’s mark is STAYS BRIGHTER LONGER for “LED light bulbs; LED lighting fixtures for indoor and outdoor lighting applications; LED security lighting; LED track lighting; LED landscape lights; LED lighting systems, namely, LED modules, power supplies, and wiring” in Class 11.
In this case, applicant describes its goods as various types of LED lighting, and related wiring and supplies. The term STAYS, in relation to applicant’s goods, is defined as “to continue in a place or condition.” See http://www.merriam-webster.com/dictionary/stays (defining the verb “stay”). The term BRIGHTER, in relation to applicant’s goods, is defined as “radiating or reflecting light.” See http://www.merriam-webster.com/dictionary/brighter (defining the adjective “bright”). The term LONGER, in relation to applicant’s goods, is defined as “extending over a considerable time.” See http://www.merriam-webster.com/dictionary/longer (defining the adjective “long”).
Through the lens of applicant’s goods, applicant’s mark STAYS BRIGHTER LONGER means LED lighting that continues in the condition of radiating light extended over a considerable time. This describes an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods, because it is a phrase that is lauding that applicant’s lighting goods will remain bright longer than other competing lighting goods.
Therefore, because applicant’s mark is merely descriptive of the services in the application, registration is refused pursuant to Section 2(e)(1) of the Trademark Act.
SECTION 2(f) ADVISORY
As recommended by the trademark examining attorney to the attorney of record, an intent-to-use applicant who has used the same mark on related goods may assert a claim of acquired distinctiveness under Trademark Act Section 2(f) before filing an allegation of use, if applicant can establish that, as a result of applicant’s use of the same mark on other goods, the mark has become distinctive of the goods in the intent-to-use application, and that this previously created distinctiveness will transfer to the goods in the intent-to-use application when use in commerce begins. In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1347, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001); In re Binion, 93 USPQ2d 1531, 1538 (TTAB 2009); TMEP §1212.09(a).
The Trademark Trial and Appeal Board has set forth the following two requirements for showing that a mark in an intent-to-use application has acquired distinctiveness:
(1) Applicant must establish that the same mark has acquired distinctiveness as to the other goods, by submitting evidence such as ownership of an active prior registration for the same mark for sufficiently similar or related goods, which applicant has already claimed two such registrations as part of the application, a prima facie showing of acquired distinctiveness based on five years’ use of the same mark with related goods, or actual evidence of acquired distinctiveness for the same mark with respect to the other goods and/or services; and
(2) Applicant must show sufficient relatedness of the goods in the intent-to-use application and those for which the mark has acquired distinctiveness to warrant the conclusion that the previously created distinctiveness will transfer to the goods in the application upon use. The showing necessary to establish relatedness will be decided on a case-by-case basis and will depend upon the nature of the goods involved and the language used to identify them in the application.
TMEP §1212.09(a); see Kellogg Co. v. Gen. Mills Inc., 82 USPQ2d 1766, 1770-71 (TTAB 2007); In re Rogers, 53 USPQ2d 1741, 1744-45 (TTAB 1999).
To seek registration on the Principal Register based on a claim of acquired distinctiveness under Section 2(f), applicant generally may provide the following verified statement of five years’ use: “The mark has become distinctive of the goods and/or services through the applicant’s substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for at least five years immediately before the date of this statement.” See 15 U.S.C. §1052(f); 37 C.F.R. §2.41(a); TMEP §§1212.03-.06 et seq.
To provide a verified statement. After opening the correct TEAS form, answer “yes” to wizard question #10, and follow the instructions within the form for signing. In this case, the form will require two signatures: one in the “Declaration Signature” section and one in the “Response Signature” section.
SUPPLEMENTAL REGISTER ADVISORY
In the alternative, applicant may respond to this refusal by submitting an allegation to allege use and amending to the Supplemental Register. Although an amendment to the Supplemental Register would normally be an appropriate response to this refusal, such a response is not appropriate in the present case. The instant application was filed under Trademark Act Section 1(b) and is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use meeting the requirements of 37 C.F.R. §2.76 has been timely filed. 37 C.F.R. §2.47(d); TMEP §§816.02, 1102.03.
If applicant files an acceptable allegation of use and also amends to the Supplemental Register, the application effective filing date will be the date applicant met the minimum filing requirements under 37 C.F.R. §2.76(c) for an amendment to allege use. TMEP §§816.02, 1102.03; see 37 C.F.R. §2.75(b). In addition, the undersigned trademark examining attorney will conduct a new search of the USPTO records for conflicting marks based on the later application filing date. TMEP §§206.01, 1102.03.
CLASSIFICATION & IDENTIFICATION OF GOODS
The identification of goods contains wording that is indefinite and misclassified, and must be amended. TMEP §1402.03(a); see 37 C.F.R. §2.32(a)(6). Specifically, the wording “LED security lighting” is a misclassified identification that belongs with other safety and security items in Class 9, and must be further clarified as to the type or purpose of the security lighting. For example, applicant may clarify that the LED security lighting is “security lighting for outdoor use,” or “motion sensitive security lights.” The suggested classification and amendments are emphasized below.
The applicant may adopt the following, if accurate:
Class 9: Motion sensitive LED security lighting
Class 11: LED light bulbs; LED lighting fixtures for indoor and
outdoor lighting applications; LED security lighting; LED track lighting; LED landscape lights; LED lighting systems, namely, LED modules, power supplies, and wiring
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 ADVISORY – CLARIFICATION AS TO NUMBER OF CLASSES FOR WHICH REGISTRATION IS SOUGHT
The application identifies goods that are classified in at least two classes; however, applicant submitted a fee sufficient for only one class. In a multiple-class application, a fee for each class is required. 37 C.F.R. §2.86(a)(2), (b)(2); TMEP §§810.01, 1403.01.
Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.
The application identifies goods in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):
(1) List the goods 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 already paid (view the USPTO’s current fee schedule). The application identifies goods that are classified in at least two classes; however, applicant submitted a fee sufficient for only one 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 a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
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.
How to respond. Click to file a response to this nonfinal Office action.
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.
/Caile Reid/
Caile Reid
Examining Attorney
Law Office 123
(571) 270-0764
caile.reid@uspto.gov
RESPONSE GUIDANCE