To: | ASSA ABLOY AB (ipdocketing@haynesboone.com) |
Subject: | U.S. Trademark Application Serial No. 88599915 - AERO - 58845.32 |
Sent: | June 23, 2020 03:00:28 PM |
Sent As: | ecom125@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88599915
Mark: AERO
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Correspondence Address: 2323 Victory Avenue, Suite 700
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Applicant: ASSA ABLOY AB
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Reference/Docket No. 58845.32
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: June 23, 2020
This Office action is supplemental to and supersedes the previous Office action issued on December 11, 2019 in connection with this application. The assigned trademark examining attorney inadvertently omitted a requirement relevant to the mark in the subject application. See TMEP §§706, 711.02. Specifically, applicant must provide its domicile street address or must demonstrate that the listed address is, in fact, the applicant’s domicile.
The trademark examining attorney apologizes for any inconvenience caused by the delay in raising this issue.
Applicant must address the issue raised in this Office action, in addition to the issues raised in the Office action dated December 11, 2019. The issues raised in the previous December 11, 2019 Office action are as follows and are maintained: Section 2(e)(1) merely descriptive refusal, identification of goods, entity information requires clarification.
Further, the following requirements have satisfied or withdrawn: foreign registration certificate required, request for information, multiple-class application requirements. See TMEP §713.02.
All arguments and evidence included in the December 11, 2019 Office action are incorporated herein by reference.
The following is a SUMMARY OF ISSUES that applicant must address:
Applicant must respond to all issues raised in this Office action and the previous December 11, 2019 Office action, within six (6) months of the date of issuance of this Office action. 37 C.F.R. §2.62(a); see TMEP §711.02. If applicant does not respond within this time limit, the application will be abandoned. 37 C.F.R. §2.65(a).
SECTION 2(E)(1) MERELY DESCRIPTIVE REFUSAL
The determination of whether a mark is merely descriptive is made in relation to an applicant’s goods, not in the abstract. DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012); In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); TMEP §1209.01(b); see, e.g., In re Polo Int’l Inc., 51 USPQ2d 1061, 1062-63 (TTAB 1999) (finding DOC in DOC-CONTROL would refer to the “documents” managed by applicant’s software rather than the term “doctor” shown in a dictionary definition); In re Digital Research Inc., 4 USPQ2d 1242, 1243-44 (TTAB 1987) (finding CONCURRENT PC-DOS and CONCURRENT DOS merely descriptive of “computer programs recorded on disk” where the relevant trade used the denomination “concurrent” as a descriptor of a particular type of operating system).
“Whether consumers could guess what the good is from consideration of the mark alone is not the test.” In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
Applicant’s mark is AERO for “Electric control panels; Electrical control panels; Touch sensitive electric control panels; Electronic display interfaces; Electronic indicator panels; Monitoring apparatus and instruments, namely, wired and wireless controllers to monitor and control the functioning of other electronic devices” in International Class 9.
The wording AERO merely describes a purpose or use of applicant’s goods, namely, that such goods are for use in connection with aircrafts and/or the field of aeronautics.
Per applicant’s response communication dated June 11, 2019, applicant argues that “the term AERO does not immediately describe any purpose, use, or quality of Applicant’s goods. […] Admittedly, the term AERO undoubtedly evokes a wide variety of associations in the mind of the public: flying; space flight; airplanes; space shuttles; and others. But there is no mental leap the consuming public would make from AERO to panels used for access control systems. Such an association does not exist, and the term is arbitrary as applied to Applicant’s goods.” Such arguments are unpersuasive.
The previously attached evidence from Merriam-Webster shows that the phrasing “AERO” means “of or relating to aircraft or aeronautics.” See previously attached evidence. Terms that describe the function or purpose of a product or service may be merely descriptive. TMEP §1209.03(p); see, e.g., In re Hunter Fan Co., 78 USPQ2d 1474, 1477 (TTAB 2006) (holding ERGONOMIC merely descriptive of ceiling fans); In re Wallyball, Inc., 222 USPQ 87, 89 (TTAB 1984) (holding WALLYBALL merely descriptive of sports clothing and game equipment); In re Orleans Wines, Ltd., 196 USPQ 516, 517 (TTAB 1977) (holding BREADSPRED merely descriptive of jams and jellies). The wording “AERO” is thus descriptive in the context of the applied-for mark, in that such wording may be perceived by consumers to merely describe the purpose or field of use of applicant’s International Class 9 goods, namely, that such goods are for use in connection with aircrafts and/or the field of aeronautics.
Further, the previously attached third-party evidence from Flight Velocity, Investigation of an expert health monitoring system for aeronautical structures based on pattern recognition and acousto-ultrasonics, Aero Expo, Aeronautical Radio Communication Systems and Networks, shows that the wording AERO is used to describe control panel and monitoring goods, namely, the field of use for such goods. See previously attached evidence. The applied-for wording therefore merely describes a purpose or use of applicant’s International Class 9 goods, as set forth in the identification.
Applicant also argues that “third-party registrations confirm that AERO is registrable for general-purpose goods and services.” This argument is unpersuasive.
It is well settled that each case must be decided on its own facts and the Trademark Trial and Appeal Board is not bound by prior decisions involving different records. See In re Nett Designs, Inc., 236 F.3d 1339, 1342, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001); In re Datapipe, Inc., 111 USPQ2d 1330, 1336 (TTAB 2014); TMEP §1209.03(a). The question of whether a mark is merely descriptive is determined based on the evidence of record at the time each registration is sought. In re Virtual Indep. Paralegals, LLC, 2019 USPQ2d 111512, at *9 (TTAB 2019) (citing In re Nett Designs, Inc., 236 F.3d at 1342, 57 USPQ2d at 1566); TMEP §1209.03(a).
For these reasons, the mark is merely descriptive of applicant’s goods, and registration of the applied-for mark on the Principal Register must be refused.
In this case, the proposed amendment to the U.S. application identifies the following goods: “electronic display interfaces.”
However, the original application and foreign registration identically identify the following goods: “electronic display panels.”
This portion of the proposed amendment to the U.S. application is beyond the scope of the original identification and exceeds the scope of goods in the foreign registration because electronic display interfaces are broader in nature and function than that of electronic display panel goods. See attached Merriam-Webster definition of “interface” (“a system that is used for operating a computer; a system that controls the way information is shown to a computer user and the way the user is able to work with the computer”) and “panel” (“a usually vertical mount for controls or dials (as of instruments of measurement)”).
Therefore, applicant may respond by satisfying one of the following:
(1) Amending the identification of goods in the U.S. application to correspond to the goods in the original identification and foreign registration, ensuring that all goods beyond the scope of the foreign registration are deleted from the U.S. application; or
(2) Deleting the Section 44 basis for the goods beyond the scope of the foreign registration and relying solely on the Section 1 basis for the remaining goods.
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, 806.04, 1402.01(b).
Additionally, applicant may respond by arguing that these goods are within the scope of the foreign registration and should remain in the U.S. application.
Applicant may substitute the following wording, if accurate:
International Class 9:
Electric control panels; Electrical control panels; Touch sensitive electric control panels; Electronic digital signage display interfaces being display panels; Electronic indicator panels; Monitoring apparatus and instruments, namely, wired and wireless controllers to monitor and control the functioning of other electronic devices
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.
ENTITY INFORMATION REQUIRES CLARIFICATION
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 an “aktiebolag” 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).
FOREIGN APPLICANT WITH A POST OFFICE BOX – NON-STREET ADDRESS & U.S.-LICENSED ATTORNEY OF RECORD – DOMICILE REQUIRED
An individual applicant’s domicile is the place a person resides and intends to be the person’s principal home. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. A juristic entity’s domicile is the principal place of business, i.e., headquarters, where a juristic entity applicant’s senior executives or officers ordinarily direct and control the entity’s activities. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. An applicant whose domicile is located outside of the United States or its territories is foreign-domiciled and must be represented at the USPTO by a U.S.-licensed attorney qualified to practice before the USPTO under 37 C.F.R. §11.14. 37 C.F.R. §2.11(a).
The application record lists applicant as a juristic entity and specifies applicant’s domicile as a post office box or mail forwarding service instead of a street address. In most cases, a post office box or mail forwarding service is not acceptable as a domicile address because it does not identify the location of the applicant’s headquarters where the entity’s senior executives or officers ordinarily direct and control the entity’s activities. See37 C.F.R. §§2.2(o)-(p), 2.189; Examination Guide 4-19, at I.A.3. Thus, applicant must provide its domicile street address. See 37 C.F.R. §2.189. Alternatively, an applicant may demonstrate that the listed address is, in fact, the applicant’s domicile. Examination Guide 4-19, at I.A.3.
To provide documentation supporting applicant’s domicile. Open the correct TEAS response form and enter the serial number, answer “yes” to wizard question #3, and on the “Additional Statement(s)” page, below the “Miscellaneous Statement” field, click the button below the text box to attach documentation to support the address.
To provide applicant’s domicile street address. After opening the correct TEAS response form and entering the serial number, answer “yes” to wizard question #5, and provide applicant’s street address on the “Owner Information” page. Information provided in the TEAS response form will be publicly viewable.
If applicant wants to hide its domicile address from public view because of privacy or other concerns, applicant must have a mailing address that can be made public and differs from its domicile address. In this case, applicant must follow the steps below in the correct order to ensure the domicile address will be hidden:
(1) First submit a TEAS Change Address or Representation (CAR) form. Open the form, enter the serial number, click “Continue,” and
(a) Use the radio buttons to select “Attorney” for the role of the person submitting the form;
(b) Answer “Yes” to the wizard question asking, “Do you want to UPDATE the mailing address, email address, phone or fax number(s) for the trademark owner/holder?” and click “Continue;”
(c) On the “Owner Information” page, if the previously provided mailing address has changed, applicant must enter its new mailing address in the “Mailing Address” field, which will be publicly viewable;
(d) On the “Owner Information” page, uncheck the box next to “Domicile Address” and enter the new domicile address in the text box immediately below the checkbox.
(2) Then submit a TEAS response form to indicate the domicile address has been changed. Open the form and
(a) Answer “yes” to wizard question #3 and click “Continue;”
(b) Click on the “Miscellaneous Statement” box on the “Additional Statement(s)” page, and enter a statement in the text box immediately below the checkbox that the domicile address was previously changed in the CAR form.
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
How to respond. Click to file a response to this nonfinal Office action.
/Amanda Galbo/
Amanda Galbo
Trademark Examining Attorney
Law Office 125
(571) 272-5391
amanda.galbo@uspto.gov
RESPONSE GUIDANCE