To: | Honeywell International Inc. (David.Cohen2@Honeywell.com) |
Subject: | U.S. Trademark Application Serial No. 90003985 - HONEYWELL - N/A |
Sent: | August 18, 2020 10:59:29 AM |
Sent As: | ecom113@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 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90003985
Mark: HONEYWELL
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Correspondence Address: 300 SOUTH TRYON STREET 5TH FLOOR
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Applicant: Honeywell International 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: August 18, 2020
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
The term “TMEP” refers to the USPTO’s Trademark Manual of Examining Procedure, a manual written by USPTO trademark attorneys that explains the laws and procedures applicable to the trademark application, registration, and post-registration processes. The USPTO updates the TMEP periodically to reflect changes in law, policy, and procedure.
NO CONFLICTING MARK FOUND
SECTION 2(e)(4) REFUSAL – PRIMARILY MERELY A SURNAME
An applicant’s mark is primarily merely a surname if the surname, when viewed in connection with the applicant’s recited goods and/or services, “‘is the primary significance of the mark as a whole to the purchasing public.’” Earnhardt v. Kerry Earnhardt, Inc., 864 F.3d 1374, 1377, 123 USPQ2d 1411, 1413 (Fed. Cir. 2017) (quoting In re Hutchinson Tech. Inc., 852 F.2d 552, 554, 7 USPQ2d 1490, 1492 (Fed. Cir. 1988)); TMEP §1211.01.
The following five inquiries are often used to determine the public’s perception of a term’s primary significance:
(1) Whether the surname is rare;
(2) Whether anyone connected with applicant uses the term as a surname;
(3) Whether the term has any recognized meaning other than as a surname;
(4) Whether the term has the structure and pronunciation of a surname; and
(5) Whether the term is sufficiently stylized to remove its primary significance from that of a surname.
In re Eximius Coffee, LLC, 120 USPQ2d 1276, 1278 & n.2, 1282-83 (TTAB 2016) (citing In re Benthin Mgmt. GmbH, 37 USPQ2d 1332, 1333-34 (TTAB 1995) for the Benthin inquiries/factors); TMEP §1211.01; see also In re Etablissements Darty et Fils, 759 F.2d 15, 16-18, 225 USPQ 652, 653 (Fed. Cir. 1985).
These inquiries are not exclusive, and any of these circumstances – singly or in combination – and any other relevant circumstances may be considered when making this determination. In re Eximius Coffee, LLC, 120 USPQ2d at 1277-78; TMEP §1211.01. For example, when the applied-for mark is not stylized, it is unnecessary to consider the fifth inquiry. In re Yeley, 85 USPQ2d 1150, 1151 (TTAB 2007); TMEP §1211.01.
Please see the attached evidence from the LEXISNEXIS® surname database, establishing the surname significance of HONEYWELL. This evidence shows the applied-for mark appearing 5,447 times as a surname in the LEXISNEXIS® surname database, which is a weekly updated directory of cell phone and other phone numbers (such as voice over IP) from various data providers.
Here, the term HONEYWELL looks and sounds like a surname.
The term HONEYWELL is the surname of the founder of applicant’s company, namely, Mark C. Honeywell.
The term HONEYWELL is a standard character mark and thus, is not sufficiently stylized to remove its primary significance from that of a surname.
For the above reasons, registration is refused because the applied-for mark is primarily merely a surname under Trademark Act Section 2(e)(4).
OPTIONS
(1) Prior Registrations: Applicant may claim ownership of one or more active prior registrations on the Principal Register of the same mark for goods and/or services that are sufficiently similar to those named in the pending application. 37 C.F.R. §2.41; TMEP §§1212, 1212.04. Applicant may do so by submitting the following statement, if accurate: “The mark has become distinctive of the goods and/or services as evidenced by the ownership of active U.S. Registration No(s). {specify registration number} on the Principal Register for the same mark for sufficiently similar goods and/or services.” TMEP §1212.04(e).
(2) Five Years’ Use: Applicant may submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “The mark has become distinctive of the goods and/or services through the applicant’s substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement.” 37 C.F.R. §2.41; TMEP §1212.05(d); see 37 C.F.R. §2.193(e)(1).
(3) Other Evidence: Applicant may submit other 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), with the following statement, if accurate: “The evidence shows that the mark has become distinctive of the goods and/or services.” See 37 C.F.R. §2.41; TMEP §§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.
If applicant cannot satisfy one of the above, applicant may respond by amending the application to seek registration on the Supplemental Register. See 15 U.S.C. §1091; 37 C.F.R. §§2.47, 2.75(a).
REQUIREMENTS
If applicant responds to the refusal, applicant must also respond to the requirements set forth below.
IDENTIFICATION OF THE GOODS
As set forth below, the identification of goods for International Class 9 must be clarified because it is, in part, indefinite and, in part, too broad and could include goods in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. The indefinite and/or broad wording has been underlined with comments and suggestions in brackets.
respiratory protection products, namely, air purifying respirators [further specify nature of the goods; for example, if accurate, may amend to “protective industrial respirators in the nature of air purifying respirators”]
and rescue breathing apparatus [further specify nature of the goods; for example, if accurate, may amend to “rescue oxygen breathing apparatus”];
Protection masks [indefinite and overbroad because the nature of the goods is unclear and could include goods in more than one class; for example, if accurate, may amend to “Protective face masks for the prevention of accident or injury” in Class 9 and/or “Sanitary masks for protection against viral infection” in Class 10];
self-contained breathing apparatus for use by first responders; eye and face protection apparatus, namely, goggles, protective eyewear, protective glasses, and
face shields [too broad because face shields are in more than one class and specificity of the item is needed to determine which class is appropriate for the specific type of face shield; for example, if accurate, may amend to “Protective industrial face shields” in Class 9 or “Face shields for medical use” properly in Class 10];
electrical safety protective gear, namely,
gloves [further specify nature of the goods; for example, if accurate, may amend to “protective work gloves”],
face shields [further specify nature of the goods; for example, if accurate, may amend to “protective industrial work shields”],
and hoods [further specify nature of the goods; for example, if accurate, may amend to “protective work hoods”];
protective work gloves; gloves for laboratory use
For example, applicant may amend the entire identification to the following, if accurate (suggestions in bold):
Class 9:
respiratory protection products, namely, protective industrial respirators in the nature of air purifying respirators and rescue oxygen breathing apparatus; self-contained breathing apparatus for use by first responders; eye and face protection apparatus, namely, goggles, protective eyewear, protective glasses, and protective industrial face shields; electrical safety protective gear, namely, protective work gloves, protective industrial work shields and protective work hoods; protective work gloves; gloves for laboratory use
Class 10:
Sanitary masks for protection against viral infection; Face shields for medical use
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.
CLASSIFICATION
MULTIPLE CLASS REQUIREMENTS
The application identifies goods that may be classified in at least two classes; however, applicant submitted a fee(s) sufficient for only one class. In a multiple-class application, a fee for each class is required. 37 C.F.R. §2.86(a)(2), (b)(2); TMEP §§810.01, 1403.01. For more information about adding classes to an application, see the Multiple-class Application webpage.
Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.
The USPTO changed the federal trademark rules to eliminate the TEAS Regular application, which is now considered a “TEAS Standard” application. See 37 C.F.R. §2.6(a)(iii). The fee for adding classes to a TEAS Standard application is $275 per class. See id. For more information about these changes, see the Mandatory Electronic Filing webpage.
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).
(3) 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.
(4) Submit a specimen for each international class. The current specimen is acceptable for class 9; and applicant needs a specimen for class 10. See more information about specimens.
Examples of specimens. Specimens for goods include a photograph of (1) the actual goods bearing the mark; (2) an actual container, packaging, tag or label for the goods bearing the mark; or (3) a point-of-sale display showing the mark directly associated with the goods. See 37 C.F.R. §2.56(b)(1), (c); TMEP §904.03(a)-(m). A webpage specimen submitted as a display associated with the goods must show the mark in association with a picture or textual description of the goods and include information necessary for ordering the goods. TMEP §904.03(i); see 37 C.F.R. §2.56(b)(1), (c).
Any webpage printout or screenshot submitted as a specimen, whether for goods or services, must include the webpage’s URL and the date it was accessed or printed. 37 C.F.R. §2.56(c).
(5) 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.
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.
/Douglas M. Lee/
Trademark Examining Attorney
Law Office 113
U.S. Patent and Trademark Office
571-272-9343
douglas.lee4@uspto.gov
RESPONSE GUIDANCE