To: | BRITA LP (trademarks@clorox.com) |
Subject: | U.S. Trademark Application Serial No. 88598031 - SMARTLIGHT - TM/Brita-cgh |
Sent: | December 03, 2019 03:29:05 PM |
Sent As: | ecom104@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88598031
Mark: SMARTLIGHT
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Correspondence Address:
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Applicant: BRITA LP
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Reference/Docket No. TM/Brita-cgh
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: December 03, 2019
SEARCH RESULTS
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).
· SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
Applicant has applied for the standard character mark “SMARTLIGHT” for the goods identified as “Water filters” and “portable water dispensers.”
“Whether consumers could guess what the product [or service] is from consideration of the mark alone is not the test.” In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
Generally, if the individual components of a mark retain their descriptive meaning in relation to the goods, the combination results in a composite mark that is itself descriptive and not registrable. In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1516 (TTAB 2016) (citing In re Tower Tech, Inc., 64 USPQ2d 1314, 1317-18 (TTAB (2002)); TMEP §1209.03(d); see, e.g., In re Petroglyph Games, Inc., 91 USPQ2d 1332, 1341 (TTAB 2009) (holding BATTLECAM merely descriptive of computer game software with a feature that involve battles and provides the player with the option to utilize various views of the battlefield); In re Cox Enters., 82 USPQ2d 1040, 1043 (TTAB 2007) (holding THEATL merely descriptive of publications featuring news and information about Atlanta where THEATL was the equivalent of the nickname THE ATL for the city of Atlanta); In re Tower Tech, Inc., 64 USPQ2d 1314, 1317-18 (TTAB 2002) (holding SMARTTOWER merely descriptive of highly automated cooling towers); In re Sun Microsystems, Inc., 59 USPQ2d 1084, 1085 (TTAB 2001) (holding AGENTBEANS merely descriptive of computer software for use in developing and deploying application programs on a global computer network).
Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the goods and/or services is the combined mark registrable. See In re Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968); In re Positec Grp. Ltd., 108 USPQ2d 1161, 1162-63 (TTAB 2013).
In this case, both the individual components and the composite result are descriptive of applicant’s goods and do not create a unique, incongruous, or nondescriptive meaning in relation to the goods. Specifically, the wording SMART means “Capable of making adjustments that resemble those resulting from human decisions, chiefly by means of electronic sensors and computer technology” and LIGHT means “electromagnetic radiation that is visible, perceivable by the normal human eye as colors between red and violet, having frequencies between 400 terahertz and 790 terahertz and wavelengths between 750 nanometers and 380 nanometers” and “a source of light.” Thus the combination of the wording SMARTLIGHT in the applied-for mark immediately describes that the applicant’s filters and portable water dispensers will feature or involve a source of light that is capable of making adjustments by means of electronic sensors. The attached evidence from the applicant’s website shows that the applicant’s pitchers and filters involve a “status indicator” that uses an “intelligent mechanism” and an LED that is in the nature of a “smart light” which “signals when your filter cartridge needs replacement.” Material obtained from applicant’s website is acceptable as competent evidence. See In re N.V. Organon, 79 USPQ2d 1639, 1642-43 (TTAB 2006); In re Promo Ink, 78 USPQ2d 1301, 1302-03 (TTAB 2006); TBMP §1208.03; TMEP §710.01(b).
Further, the term “smart” has been held merely descriptive of devices that employ automated technology. See In re Cannon Safe, Inc., 116 USPQ2d 1348, 1350 (TTAB 2015) (holding SMART SERIES merely descriptive of metal safes specifically designed to store firearms); In re Cryomedical Scis. Inc., 32 USPQ2d 1377, 1378 (TTAB 1994) (holding SMARTPROBE merely descriptive of disposable cryosurgical probes); see also In re Tower Tech, Inc., 64 USPQ2d 1314, 1317-18 (TTAB 2002) (holding SMARTTOWER merely descriptive of commercial and industrial cooling towers and accessories therefor, sold as a unit). Here, the evidence from the applicant’s website indicates that the goods involve “intelligent” or automated technology.
The further provided evidence from http://acuvatech.com/store/1-5litre shows that they provide a “smart faucet integration” that features a light to indicate that the filter system is wording. The attached evidence from http://www.pur.com/water-filter-pitchers-and-dispensers/pur-ultimate-pitcher-with-led shows that they provide a water dispenser that features and LED or a light. Thus consumers would immediately understand that the applied-for mark describes that the applicant’s goods will feature or involve an intelligent visual indicator in the nature of a source of light.
For purposes of evaluating a trademark, material obtained from the Internet is generally accepted as competent evidence. See In re Bayer Aktiengesellschaft, 488 F.3d 960, 966, 82 USPQ2d 1828, 1833 (Fed. Cir. 2007); In re Reed Elsevier Props., Inc., 482 F.3d 1376, 1380, 82 USPQ2d 1378, 1381 (Fed. Cir. 2007); TBMP §1208.03; TMEP §710.01(b).
Thus as the applied for mark merely describes a feature or characteristic of the applicant’s goods, the applied-for mark is not entitled to registration under Trademark Act Section 2(e)(1) on the Principal Register.
INFORMATION REQUIRED
(1) Fact sheets, instruction manuals, brochures, advertisements and pertinent screenshots of applicant’s website as it relates to the goods and/or services in the application, including any materials using the terms in the applied-for mark. Merely stating that information about the goods and/or services is available on applicant’s website is insufficient to make the information of record.;
(2) If these materials are unavailable, applicant should submit similar documentation for goods and services of the same type, explaining how its own product or services will differ. If the goods and/or services feature new technology and information regarding competing goods and/or services is not available, applicant must provide a detailed factual description of the goods and/or services. Factual information about the goods must make clear how they operate, salient features, and prospective customers and channels of trade. For services, the factual information must make clear what the services are and how they are rendered, salient features, and prospective customers and channels of trade. Conclusory statements will not satisfy this requirement.; and
(3) Applicant must respond to the following questions:
(a) Will the applicant’s goods feature or involve automated sensing of water quality or other features?
(b) Will the applicant’s goods feature or involve lights or a visible illuminated indicator?
(c) Do applicant’s competitors use the wording SMARTLIGHT or SMART LIGHT to advertise similar goods?
(d) Who will be the typical consumer of applicant’s goods?
(e) Where will applicant’s goods typically be purchased? Please provide examples of online and brick-and-mortar store venues, if applicable.
See 37 C.F.R. §2.61(b); TMEP §§814, 1402.01(e).
Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.
ADVISORY – SUPPLEMENTAL REGISTER NOT YET AVAILABLE
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.
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.
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.
/Natalie L. Kenealy/
Examining Attorney
Law Office 104
571-272-7817
Natalie.Kenealy@uspto.gov
RESPONSE GUIDANCE