To: | Smart Inc. (mark@bmbr.com) |
Subject: | U.S. Trademark Application Serial No. 88665551 - TORQ - N/A |
Sent: | March 04, 2020 04:38:44 PM |
Sent As: | ecom125@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88665551
Mark: TORQ
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Correspondence Address: BRANFMAN MAYFIELD BUSTARDE REICHENTHAL L
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Applicant: Smart Inc.
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Reference/Docket No. N/A
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: March 04, 2020
This New Non-Final Office action is in response to applicant’s communication filed on February 4, 2020.
In a previous Office action dated February 4, 2020, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(d) for a likelihood of confusion with registered marks, and Trademark Act Section 2(e)(1) for being merely descriptive. In addition, applicant was advised as to the procedure to claim ownership of the cited registrations, if it were the owner of said registrations.
Based on applicant’s response, the following refusal has also been obviated: sufficient claim of ownership in response to Section 2(d) refusal. See TMEP §§713.02, 714.04.
Further, the trademark examining attorney maintains and continues the refusal in the summary of issues below, which contains new issues. See 37 C.F.R. §2.63(b); TMEP §714.04.
SUMMARY OF ISSUES:
SECTION 2(e)(1) REFUSAL – MERELY DESCRIPTIVE
Standard of Analysis for Section 2(e)(1) Refusal
The determination of whether a mark is merely descriptive is made in relation to an applicant’s goods and/or services, 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 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).
Here, TORQ is the phonetic equivalent of the wording TORQUE, which merely describes a feature or characteristic of applicant’s goods.
Specifically, the word “TORQUE” means a “turning or twisting force.” See http://www.ahdictionary.com/word/search.html?q=torque. In the context of the applicant’s goods, TORQUE merely describes the mechanics its orbital polisher uses in order to produce the specific circular motion of the tool. In fact, manufacturers of orbital polishers often tout their products as having “more torque” or “higher torque.” (See attached evidence referenced below). Thus, the entirety of applicant’s mark TORQ immediately and merely conveys that applicant’s goods create a certain physical force (specifically, torque) that is both necessary and desirable in polishing tools used for polishing objects, including detailing vehicles.
The following internet website evidence attached to the February 4, 2020 Office action also illustrate that others use the term “torque” to describe the speed, motion, or power of orbital polishing tools:
Additionally, the internet website evidence attached to this New Non-Final Office action bolsters this conclusion:
Thus, consumers encountering the mark “TORQ” on the applicant’s goods are likely to perceive the mark as merely indicating a feature or characteristic of the goods, specifically that applicant is providing a tool that functions by generating torque. Consequently, the entire mark is descriptive of the goods in the application.
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.
REQUEST TO CHANGE OWNER NAME WITHOUT ASSIGNMENT
If the application was filed by the owner and the original applicant has since changed its name or transferred ownership of the mark to another entity, the new owner must file documentation to establish its current ownership of the application by satisfying one of the following:
(1) The new owner must (a) record an assignment, name change, or other documentation affecting title with the USPTO’s Assignment Recordation Branch showing a clear chain of title to the mark in the new owner; and (b) promptly notify the trademark examining attorney that the documentation has been recorded.; OR
(2) The new owner must file either (a) a written statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20, explaining in detail the chain of title to the new owner; or (b) documentation showing transfer of title to the new owner. However, the registration will not issue in the name of the new owner without recording chain of title documentation with the USPTO and notifying the trademark examining attorney, as specified in (1) above.
TMEP §502.01; see 15 U.S.C. §1060; 37 C.F.R. §§2.193(e)(1), 3.73(b)(1); TMEP §502.02(a).
Assignments and other documents affecting title may be filed electronically. There is a fee for recording ownership changes. 37 C.F.R. §§2.6(b)(6), 3.41(a); TMEP §503.03(d). Recording an assignment or other ownership transfer document does not constitute a response to an Office action. TMEP §503.01(d). Applicant must still file a separate response to this Office action. See id.
If the application was filed by the owner and the there is an inadvertent error in the applicant’s name, such as a minor typographical error or misspelling, or the name identifies a party that did not exist as of the application filing date, the application may be amended to correct the applicant’s name. TMEP §1201.02(c). In either case, applicant should include in the amendment request the reason for the correction (such as “ABC Corporation did not exist as of the filing date of the application,” or “Company” was inadvertently omitted from the applicant’s name in the application). Id.
FIVE YEARS’ USE INSUFFICIENT FOR SECTION 2(f) CLAIM
Applicant may respond by providing additional evidence of acquired distinctiveness, such as verified statements of long term use, advertising and sales expenditures, examples of advertising, affidavits and declarations of consumers, customer surveys. See 37 C.F.R. §2.41(a)(3); TMEP §§1212.02(g), 1212.06 et seq.
When determining whether the evidence shows the mark has acquired distinctiveness, the trademark examining attorney will consider the following six factors: (1) association of the mark with a particular source by actual purchasers (typically measured by customer surveys linking the name to the source); (2) length, degree, and exclusivity of use; (3) amount and manner of advertising; (4) amount of sales and number of customers; (5) intentional copying; and (6) unsolicited media coverage. See Converse, Inc. v. ITC, 909 F.3d 1110, 1120, 128 USPQ2d 1538, 1546 (Fed. Cir. 2018) (“the Converse factors”). “[N]o single factor is determinative.” In re Steelbuilding.com, 415 F.3d at 1300, 75 USPQ2d at 1424; see TMEP §§1212.06 et seq. Rather, all factors are weighed together in light of all the circumstances to determine whether the mark has acquired distinctiveness. In re Steelbuilding.com, 415 F.3d at 1300, 75 USPQ2d at 1424. This evidence must demonstrate that the relevant public understands the primary significance of the mark as identifying the source of applicant’s product or service rather than identifying the product or service itself. In re Steelbuilding.com, 415 F.3d at 1297, 75 USPQ2d at 1422.
As well as submitting additional evidence, applicant may respond to the refusal by arguing in support of registration and/or amending the application to seek registration on the Supplemental Register. See 15 U.S.C. §1091(a); 37 C.F.R. §§2.47, 2.75(a); TMEP §816. If applicant amends the application to the Supplemental Register, applicant is not precluded from submitting evidence and arguments against this refusal. TMEP §816.04.
RESPONSE OPTIONS
Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a). Applicant may respond by providing one or both of the following:
(1) a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements and/or resolves all outstanding refusals; and/or
(2) an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 per class.
37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.
In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues. TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). There is a fee required for filing a petition. 37 C.F.R. §2.6(a)(15).
How to respond. Click to file a response to this nonfinal Office action.
/Justin Berlin/
Justin Berlin
Trademark Examining Attorney
Law Office 125
(571) 272-5544
justin.berlin@uspto.gov
RESPONSE GUIDANCE