United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88685336
Mark: NUT-N-BOLT WRENCH
|
|
Correspondence Address: 10655 PARK RUN DRIVE, SUITE 100
|
|
Applicant: JS Products Inc.
|
|
Reference/Docket No. JSPROD.0325T
Correspondence Email Address: |
|
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 15, 2019
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
SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
In this case, all of the terms in applicant’s mark NUT-N-BOLT WRENCH are descriptive of applicant’s goods. Specifically, the term NUT means “A small flat piece of metal or other material, typically square or hexagonal, with a threaded hole through it for screwing on to a bolt as a fastener,” the term BOLT means “a threaded pin that screws into a nut and is used to fasten things together” and the phrase “NUT-N-BOLT” is used in the industry to refer to nuts and bolts, or tools that are used with nuts and bolts. See attached evidence consisting of website screenshots from Hernon, Nut N Bolt Guy, Bob Vila, Home Depot, Lexico, EC&M, and Albany County. Thus, the term describes a feature, function, or use of applicant’s goods, namely, that applicant’s wrenches are designed to be used with nuts and bolts.
The term WRENCH means “a tool used for gripping and turning nuts, bolts, pipes, ect.” and refers to a specific sort of tool used for wrenching objects, and is commonly used in the industry to refer to tools that manipulate fasteners, screws, steel buttons, nuts, and bolts. See attached evidence consisting of website screenshots from Hernon, Nut N Bolt Guy, Bob Vila, Home Depot, EC&M, Lexico, and Albany County. Further, applicant has identified wrenches and disclaimed the term WRENCH, recognizing its descriptive nature. Thus, this term merely describes a function and use of applicant’s goods, namely, that they are wrenches and are designed to be used with fasteners, screws, steel buttons, nuts, and bolts.
Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the goods 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 term WRENCH refers to a specific tool used for manipulating fasteners, screws, steel buttons, nuts, and bolts, and the phrase NUTS-N-BOLTS informs the consumer what the wrench is used for manipulating, e.g., nuts and bolts. See attached evidence consisting of website screenshots from Hernon, Nut N Bolt Guy, Bob Vila, Home Depot, EC&M, Lexico, and Albany County. Thus, the terms in combination immediately convey to a consumer the purpose, function, use, and characteristic of applicant’s goods, namely, that they are wrenches for use with nuts and bolts. See id.
Further, although applicant’s mark contains hyphens, adding punctuation marks to a descriptive term will not ordinarily change the term into a non-descriptive one. In re Mecca Grade Growers, LLC, 125 USPQ2d 1950, 1955 (TTAB 2018); TMEP §1209.03(u); see DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1253-54, 103 USPQ2d 1753, 1757-58 (Fed. Cir. 2012).
In view of the above, the applied-for mark is merely descriptive of the goods, and registration is therefore refused under Trademark Act Section 2(e)(1).
GENERIC ADVISORY
INFORMATION ABOUT GOODS REQUIRED
(1) A written statement explaining whether the goods do or will comprise a head or component of the wrench that makes the wrench compatible for use with nuts and/or bolts.
(2) A sample of advertisements or promotional materials featuring the goods and a photograph of the identified goods, or if such materials are not available, applicant must submit samples of advertisements or promotional materials and a photograph of similar goods.
(3) A written statement describing in detail the nature, purpose, and channels of trade of the goods.
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. Merely stating that information about the goods or services is available on applicant’s website is an insufficient response and will not make the relevant website information of record. See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).
Applicant is advised that, if applicant’s response to the request for information indicates that the goods identified in the application do not or will not comprise a head or component of the wrench that makes the wrench compatible for use with nuts and/or bolts, registration may be refused on the ground that the applied-for mark is deceptive. Trademark Act Section 2(a), 15 U.S.C. §1052(a); see In re Budge Mfg. Co., 857 F.2d 773, 775-77, 8 USPQ2d 1259, 1260-62 (Fed. Cir. 1988); In re ALP of S. Beach Inc., 79 USPQ2d 1009, 1010 (TTAB 2006); TMEP §1203.02-02(e).
AMENDMENT TO THE IDENTIFICATION REQUIRED
Applicant’s mark includes the wording “NUT-N-BOLT”, which indicates that applicant’s goods will have and/or exhibit the following feature or characteristic: That the wrenches are designed to be used with nuts and bolts and have compatible heads for use with nuts and bolts.
This feature or characteristic is considered desirable for applicant’s goods because when choosing tools for a particular project, consumers rely on the name of the tool (e.g., wrenches, screwdrivers, fasteners, nuts, and bolts) in determining whether the tool will suit the project’s needs. See attached evidence consisting of website screenshots from Hernon, Nut N Bolt Guy, Bob Vila, Home Depot, EC&M, Lexico, and Albany County. However, if some or all of the goods do not (or will not) in fact have or exhibit this feature or characteristic, then registration may be refused because the mark consists of or includes deceptive matter in relation to the identified goods. See 15 U.S.C. §1052(a); In re Budge Mfg. Co., 857 F.2d 773, 8 USPQ2d 1259 (Fed. Cir. 1988); TMEP §1203.02-.02(b).
To avoid such refusal, applicant may amend the identification to specify that the goods possess this relevant feature or characteristic. See TMEP §§1203.02(e)(ii), (f)(i), 1402.05 et seq. However, merely amending the identification to exclude goods or services with the named feature or characteristic will not avoid a deceptiveness refusal. TMEP §1203.02(f)(i).
Therefore, applicant may amend the identification to the following, if accurate: Hand tools, namely, wrenches for use with nuts and bolts.
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.
RESPONSE GUIDELINES
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. 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.
Erdman, Rachel
/Rachel Erdman/
Examining Attorney
Law Office 104
(571) 272-4717
rachel.erdman@uspto.gov
RESPONSE GUIDANCE