Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

NON-FINAL OFFICE ACTION

 

THE USPTO MUST RECEIVE APPLICANT’S RESPONSE TO THIS LETTER WITHIN SIX (6) 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:  August 15, 2020

 

The referenced application has been reviewed by the assigned trademark examining attorney. 

 

SEARCH OF USPTO DATABASE OF MARKS

 

The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d).  15 U.S.C. §1052(d); TMEP §704.02.

 

However, applicant should note the following issues with this application:

 

(1)   The International Class 9 identification requires amendment; and

 

(2)   A disclaimer of “GROCERY CAROUSEL” is required.

 

Applicant must respond timely and completely to these two issues. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

IDENTIFICATION OF GOODS REQUIRES AMENDMENT

 

The wording “computer software for storage and retrieval machine automation and inventory management” in the International Class 9 identification of goods is indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. Specifically, applicant specify whether the format for the software is downloadable, recorded, or online non-downloadable. See TMEP §§1402.03(d), 1402.11(a). Downloadable and recorded software is in International Class 9, whereas providing online non-downloadable software is a service in International Class 42. See TMEP §1402.03(d).

 

Applicant may adopt the following identifications, if accurate:

 

CLASS 7: [NO CHANGE REQUIRED]

 

CLASS 9: {Specify whether downloadable or recorded} computer software for storage and retrieval machine automation and inventory management

 

CLASS 37: [NO CHANGE REQUIRED]

 

CLASS 40: [NO CHANGE REQUIRED]

 

CLASS 42: Providing online, non-downloadable computer software for storage and retrieval machine automation and inventory management

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application. See 37 C.F.R. §2.71(a); TMEP §1402.06. Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application. See TMEP §1402.06(a)-(b). The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification. TMEP §§1402.06(b), 1402.07(a)-(b). Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted. TMEP §1402.07(e).

 

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.

 

ADVISORY: MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

The application identifies goods and services that are classified in at least five classes; however, applicant submitted fees sufficient for only four classes. Therefore, in response to the requirement that applicant amend the International Class 9 identification, applicant must either (1) restrict the application after amendment to four classes (i.e., the number of classes covered by the fees already paid), or, if classes are added to the application, (2) satisfy all the requirements below for each international class based on Trademark Act Section 1(a):

 

(a)  List the goods and services by their international class number in consecutive numerical order, starting with the lowest numbered class (as demonstrated above).

 

(b)  Submit a filing fee for each international class not covered by the fees already paid. The fee for adding classes to a TEAS Standard application is $275 per class (view the USPTO’s current fee schedule). 

 

(c)  Submit verified dates of first use of the mark anywhere and in commerce for each international class.  See more information about verified dates of use.

 

(d) Submit a specimen for each international class. The current specimens are acceptable for International Classes 7, 9, 37, 40, and 42. See more information about specimens.

 

(e)  Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.”  See more information about verification.

 

See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).

 

For an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.

 

DISCLAIMER REQUIRED

 

Applicant must disclaim “GROCERY CAROUSEL” because it is not inherently distinctive and thus an unregistrable part of the applied-for mark. See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a). 

 

Specifically, applicant offers goods and services related to “grocery storage,” and thus the word “GROCERY” in the applied-for mark indicates the purpose or use of the goods.

 

The word “carousel” refers to “a circular conveyor on which objects are displayed or rotated.” The American Heritage® Dictionary of the English Language (5th ed. 2020), http://www.ahdictionary.com/word/search.html?q=carousel. When the word “CAROUSEL” is combined with the word “GROCERY” and considered in relation to applicant’s goods and services, it immediately and directly conveys to consumers that applicant’s goods and services feature or are otherwise related to a circular conveyor on which groceries are displayed or rotated. No thought or imagination would be necessary on the part of consumers to understand this meaning of “GROCERY CAROUSEL” when it is considered in relation to applicant’s goods and services. Indeed, applicant’s goods are listed under the “Vertical Carousels” tab on applicant’s website, as demonstrated by applicant’s specimen. Moreover, applicant’s website (http://whitesystems.com/vertical-carousels/) uses the word “carousels” descriptively to refer to a type of goods: “White brand vertical carousels increase storage density, throughput, and material-handling efficiency while reducing inventory loss, labor cost, and wasted space. These carousels efficiently deliver products to the operator, maximize floor space, secure high-value inventory, and facilitate retrieval of anything from documentation to parts and tools.”

 

As such, the wording “GROCERY CAROUSEL” is not inherently distinctive and is an unregistrable part of the applied-for mark that must be disclaimed because it is, at best, merely descriptive of a feature, purpose, and/or use of applicant’s goods and services. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a). 

 

Applicant may respond to this issue by submitting a disclaimer in the following format:

 

No claim is made to the exclusive right to use “GROCERY CAROUSEL” apart from the mark as shown.

 

TMEP §§1213.03(c), 1213.08(a)(i); see In re Owatonna Tool Co., 231 USPQ 493, 494 (Comm’r Pats. 1983).

 

Applicant may not claim exclusive rights to terms that others may need to use to describe their goods and/or services in the marketplace. See Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 1560, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991); In re Aug. Storck KG, 218 USPQ 823, 825 (TTAB 1983). Therefore, failure to comply with a disclaimer requirement will result in a refusal to register the entire mark. See In re Stereotaxis Inc., 429 F.3d 1039, 1040-41, 77 USPQ2d 1087, 1088-89 (Fed. Cir. 2005); TMEP §1213.01(b).

 

For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage. 

 

RESPONSE REQUIRED

 

For this application to proceed, applicant must:

 

(1)   Amend the International Class 9 identification; and

 

(2)   Enter a disclaimer of “GROCERY CAROUSEL”.

 

Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

Click to file a response to this non-final Office action  

 

 

/Andrew Leaser/

Trademark Examining Attorney

Law Office 117

(571) 272-1911

andrew.leaser@uspto.gov

 

 

RESPONSE GUIDANCE

 

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

 

Arguments against a refusal and/or requirement are considered responses to an Office action, and responses to Office actions will not be accepted if submitted informally by telephone or email. See TMEP §709.05. Therefore, no arguments against a refusal and/or requirement will be considered if provided by telephone or email.

 

All informal communications relevant to this application will be placed in the official application record, however.

 

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 15, 2020 for

U.S. Trademark Application Serial No. 88911482

 

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. 

 

 

/Andrew Leaser/

Trademark Examining Attorney

Law Office 117

(571) 272-1911

andrew.leaser@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 15, 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.”