Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. 

 

 

Serial Number  76/049035

 

This responds to the letter and materials received February 21,2003. The finality of the prior Office action is withdrawn to consider the new arguments made of record.

 

Based on the arguments  and ownership of prior registrations through assignment, the requirement to disclaim  the term “GLOBAL MAIL” is withdrawn.

 

After careful consideration of the arguments made, the requirement for disclaimer of the geographically descriptive term DEUTSCHE POST is repeated and maintained.

 

Trademark Act Section 6(a), 15 U.S.C. §1056(a), permits the Office to require a disclaimer of an unregistrable component of a mark.  Trademark Act Section 2(e), 15 U.S.C. §1052(e), bars the registration of a mark which is merely descriptive or deceptively misdescriptive, or primarily geographically descriptive of the goods. Therefore, the examining attorney may require the disclaimer of a portion of a mark which, when used in connection with the goods or services, is merely descriptive or deceptively misdescriptive, or primarily geographically descriptive.  If an applicant does not comply with a disclaimer requirement, the examining attorney may refuse registration of the entire mark.  TMEP §1213.01(b).

 

The arguments and supporting exhibits and case law in prior Office actions are incorporated in their entirety into this letter.

 

As previously stated, the term “Deutsche” is translated into English as the geographic term “GERMAN”, according to the applicant, the home country in Europe of the applicant. Material was also made of record clearly showing that “post” as a German word of origin, also means “post, “post service, post office”. As a phrase, t he term is merely geographically descriptive , DEUTSCHE POST, the German Postal service or Office.  Unlike unique combinations of foreign wirding and arbitrary terms, such as LA YOGURT, the term DEUTSCHE POST was not created by the applicant to convey any suggestive meaning, but is the official name of the applicant in its country of origin, Germany, translated as GERMAN POSTAL OFFICE or SERVICE, primarily conveying a geographic significance as the official governmental body administering postal service for the country of Germany.

 

Moreover, in evaluating the descriptive significance of foreign terminology to American viewers, the test relies on the significance of the term to American buyers who are familiar with the language. If such terminology has descriptive significance to those in America familiar with the language, it is disclaimable matter. See: In re Hag Aktiengesellschaft, 155 USPQ 598 (TTAB 1967); In re Zazzara, 156 USPQ 348 (TTAB 1967); McKesson & Robbins Inc. v. Charles H. Phillips Chemical Co., 53 F 2d 1011   ( 2d Cir 1931).

 

Also, even to people unfamiliar with the entire language, given the large number of people familiar with the meaning of the German word “Deutsche”, and given the fact that the term “post”, either in English or German conveys the same descriptive meaning, this phrase would not be perceived as fanciful or similar to the LA YOGURT type of marks, but would be perceived as a geographcially descriptive term, requiring disclaimer.

 

The applicant states that the issue of geographic descriptiveness  for the term DEUTSCHE POST was not raised in previous cases of the applicant, and would constitute a collateral attack on the registration owned by the applicant containing these words.  However, previous decisions  by examining attorneys in approving other marks are without evidentiary value and not binding upon the agency or the Board. In re National Novice Hockey League Inc., 222 USPQ 638 (TTAB 1984).

Moreover, the mark , according to Office records, was registered last year and is not subject to any Section 15 provisions at this time.

 

For these reasons, disclaimer of the geographically descriptive term DEUTSCHE POST is required. The finality of the refusal is reinstated.

 

Please note that the only appropriate responses to a final action are either (1) compliance with the outstanding requirements, if feasible, or (2) filing of an appeal to the Trademark Trial and Appeal Board.  37 C.F.R. §2.64(a).  If the applicant fails to respond within six months of the mailing date of this refusal, this Office will declare the application abandoned.  37 C.F.R. §2.65(a).

 

 

 

 

/Henry S. Zak/

Examining Attorney

Law Office 108

(703)308-9108 x 149

 

 

How to respond to this Office Action:

 

To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.

 

To respond formally via E-mail, visit http://www.gov.uspto.report/web/trademarks/tmelecresp.htm and follow the instructions.

 

To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.

 

To check the status of your application at any time, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.gov.uspto.report/

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.