Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

Issue date:  August 25, 2020

 

INTRODUCTION

This Office action is in response to applicant’s communication filed on August 3, 2020. (Response)

 

In a previous Office action dated February 26, 2020, the trademark examining attorney refused registration of the applied-for mark based on the following:  the mark is merely descriptive under Trademark Act Section 2(e)(1). In addition, applicant was required to satisfy the following requirement:  respond to a request for information requirement.

 

Based on applicant’s Response, the trademark examining attorney notes that the following requirement has been satisfied: request for information was responded to. See TMEP §§713.02, 714.04. 

 

However, the examining attorney has reviewed applicant’s arguments in the Response to the Section 2(e)(1) descriptiveness refusal and found them unpersuasive. Therefore, the trademark examining attorney maintains and now makes FINAL the refusal in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

• Section 2(e)(1) Descriptiveness Refusal
• Advisory: Applicant Can Amend to Supplemental Register Only When Mark in Use

 

SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE

Registration is refused because the applied-for mark merely describes a feature, characteristic, purpose, 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.

 

The mark consists of a combination of descriptive wording that immediately describe features of applicant’s goods. The applicant seeks registration of the mark “HYDROSLURRY” for “ABRASIVE BLAST CLEANING MACHINES, NAMELY, ABRASIVE BLASTING CABINET FOR MACHINE PARTS; ABRASIVE BLASTING CABINETS, NAMELY, POWERED MACHINES FOR FINISHING METALS OR OTHER MATERIALS FOR MACHINE PARTS”.

 

As discussed in the initial Office action, word “SLURRY” is defined in the American Heritage dictionary as “a watery mixture of insoluble matter (such as mud, lime, or plaster of paris)”. According to the entry in Wikipedia, “a slurry is a thin sloppy mud or, any fluid mixture of a pulverized solid with a liquid (usually water)”. See previous dictionary definition and entry from Wikipedia.  “HYDRO” is an abbreviation for “water”. Applicant’s goods are “abrasive blast cleaning machines” and the term “HYDRO” is commonly used by third parties in the relevant industry to describe “hydroblasting” or wet blasting, a technique that uses high water pressure for cleaning. “HYDRO” also describes the use of water in the abrasive blast process.

 

However, in the Response applicant argues that the evidence in the initial Office action showed that “hydroblasting” is “non-abrasive” and that the “well-understood meaning of hydro-blasting” refers to “non-abrasive technology”.  Applicant argues that because its goods are “abrasive blast cleaning machines”, applicant’s combination of the “prefix “HYDRO” with “SLURRY” is “incongruous” and thus not descriptive.

 

The examining attorney finds these arguments unpersuasive. The examining attorney has attached additional third party evidence which refutes applicant’s claim that the “well-understood meaning of hydro-blasting” refers to “non-abrasive technology”. See the attached evidence showing hydro-blasting or wet blasting specifically incorporating an abrasive additive or abrasive mixtures such as sand blasting. In particular see evidence from Clean-Co Systems describing hydro-blasting as “a blast of water with an added abrasive”; MC Finishing showing “wet abrasive blast cabinets” and NLB’s “wet abrasive blasting” systems. The evidence shows use of abrasives in the hydro-blast process, and use of water and slurries in the abrasive cleaning process. Further, slurry blasting, is “a form of wet abrasive technology”, and “slurry blasting, sometimes referred to as wet blasting, is simply the process of mixing an abrasive with pressurized fresh water for the purpose of cleaning a surface”.  See the previous and additional attached evidence showing descriptive use of the terms “hydro” and “slurry” in the applicant’s industry.

 

See attached screenshots from:

• CleanCo: http://www.cleancosystems.com/hydro-blasting/
• Hydroblaster: http://www.hydroblaster.com/Wash/AAU.htm
• IPC: http://www.ipc-is.com/abrasive-blasting.htm
• MC Finishing: http://mcfinishing.com/equipment/blastcabinets/wetblast/Stainless-Steel-HYDRO-HONE.html
• NLB: http://www.nlbcorp.com/products/accessories/nozzles/
• Suffolk: http://www.suffolkelite.com/aboutus.htm
• Van Industries: http://www.vanindustriesinc.com/what-is-abrasive-blasting

 

Therefore, “HYDRO” is not suggestive or incongruous, rather, the term merely describes that applicant’s abrasive blast cleaning machines use water combined with an abrasive. The term “SLURRY” describes use of a slurry mixture in the blasting process. In fact, the attached excerpts from applicant’s own website shows applicant is providing “wet blasting cabinets”. For example, “The Hurricane Wet Blast Machine uses a seal-less slurry pump to agitate the abrasive and water into a slurry mixture. This design produces the highest percentage of abrasive to water, outperforming designs using air agitation. The wet slurry mixture is pumped directly to the abrasive blast gun where compressed air pressure accelerates the mixture to the desired pressure rating”.

 

Further, in response to the request for information, applicant stated for the record that applicant’s goods are “wet abrasive blasting machines”. As applicant’s abrasive blast cleaning machines use a “wet slurry mixture”, “HYDRO” meaning water, and “SLURRY” immediately describe features of applicant’s abrasive blast cleaning machines.

 

Determining the descriptiveness of a mark is done in relation to an applicant’s goods, the context in which the mark is being used, and the possible significance the mark would have to the average purchaser because of the manner of its use or intended use.  See In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (citing In re Bayer Aktiengesellschaft, 488 F.3d 960, 963-64, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)); TMEP §1209.01(b).  Descriptiveness of a mark is not considered in the abstract.  In re Bayer Aktiengesellschaft, 488 F.3d at 963-64, 82 USPQ2d at 1831.

 

Further, 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., Apollo Med. Extrusion Techs., Inc. v. Med. Extrusion Techs., Inc., 123 USPQ2d 1844, 1851 (TTAB 2017) (holding MEDICAL EXTRUSION TECHNOLOGIES merely descriptive of medical extrusion goods produced by employing medical extrusion technologies); In re Cannon Safe, Inc., 116 USPQ2d 1348, 1351 (TTAB 2015) (holding SMART SERIES merely descriptive of metal gun safes); In re King Koil Licensing Co., 79 USPQ2d 1048, 1052 (TTAB 2006) (holding THE BREATHABLE MATTRESS merely descriptive of beds, mattresses, box springs, and pillows). 

 

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.  There is ample evidence of record, including applicant’s own website, showing that in the context of abrasive blasting equipment, “HYDROSLURRY” immediately describes that applicant’s abrasive blast cleaning machines utilize water and slurry in the abrasive blasting cleaning process. Therefore, the refusal to register applicant’s mark as merely descriptive under Section 2(e)(1) of the Trademark Act is maintained and continued, and now made FINAL.

 

ADVISORY: AMENDMENT TO SUPPLEMENTAL REGISTER WHEN USE

Although an amendment to the Supplemental Register would normally be an appropriate response to a Section 2(e)(1) 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.

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How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

 

/Lee-Anne Berns/

Examining Attorney

Law Office 118

(571) 272 1168

Lee-anne.Berns@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on August 25, 2020 for

U.S. Trademark Application Serial No. 88694021

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Lee-Anne Berns/

Examining Attorney

Law Office 118

(571) 272 1168

Lee-anne.Berns@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from August 25, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”