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  76/082729

 

The prior filed applications, serial numbers 75/844602 and 75/845761, have abandoned.

 

Refusal –Section 2(e)(1)

 

Upon further consideration, the examining attorney refuses registration on the Principal Register because the proposed mark merely describes the services.  Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1); TMEP section 1209 et seq.

 

The examining attorney must consider whether a mark is merely descriptive in relation to the identified services, not in the abstract.  In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978); In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985).

 

A mark is merely descriptive under Trademark Act Section 2(e)(1), 15 U.S.C. 1052(e)(1), if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant services.  In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re MetPath Inc., 223 USPQ 88 (TTAB 1984); In re Bright‑Crest, Ltd., 204 USPQ 591 (TTAB 1979); TMEP section 1209.01(b).

 

The dictionary defines the term wizard as:

 

         A program utility that works as an interactive guide by walking the user

        step-by-step through an unfamiliar task

 

When the proposed mark is applied to the services it tells consumers that applicant’s logistical support services feature Trucks and the global computer network is equip with a wizard program that will assist the user. As such, the proposed mark is merely descriptive under Trademark Act Section 2(e)(1).

 

Supplemental Register

 

Although the examining attorney has refused registration on the Principal Register, the applicant may amend the application to seek registration on the Supplemental Register.  Trademark Act Section 23, 15 U.S.C. Section 1091; 37 C.F.R. Sections 2.47 and 2.75(a); TMEP sections 202.02(b) and 1115.

 

Recitation of Services

 

Applicant must amend the recitation of services to specify the type or kind of logistical support services provided. The amendment should be in the following format:

 

         Providing logistical support in the nature of…[specify activities] for vehicle

         renters and lessors via the global computer network in International Class 35

 

The applicant must rewrite the recitation of services in its entirety because of the nature and extent of the amendment.  37 C.F.R. §2.74(b).

 

Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any services that are not within the scope of the services recited in the present identification.

 

For assistance with identifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.

 

Drawing

 

The mark as depicted on the drawing does not agree with the mark as it appears on the specimen, and clarification is required.  In the present case, the drawing displays the mark as TRUCK WIZARD, and the specimen shows the mark as ADVANCED TRUCK WIZARD.  37 C.F.R. §2.72(a); TMEP §§807.14, 807.14(a) and 807.14(a)(i).  Applicant may not submit an amended drawing to conform to the display on the specimen because the character of the mark would be materially altered, i.e., the mark on the specimens creates a different commercial impression from the mark on the drawing.

 

Therefore, applicant must do one of the following:

 

(1)   submit a substitute specimen showing use of the mark as it appears on the drawing, with a statement that “the substitute specimen was in use in commerce at least as early as the filing date of the application,” verified with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20; 37 C.F.R. §§2.59(a) and 2.72(a); TMEP §904.09; or

 

(2)   amend the basis to Section 1(b) and satisfy all the requirements for this new basis.  37 C.F.R. §2.51; TMEP §807.14.

 

Where an application is based on a bona fide intention to use the mark in commerce, applicant must submit the following statement:

 

Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application since the filing date of the application.

 

This statement must be verified with a notarized affidavit or a signed declaration under 37 C.F.R. §§2.20 and 2.33.  Trademark Act Section 1(b), 15 U.S.C. §1051(b); 37 C.F.R. §2.34(a)(2); TMEP §806.01(b).

 

Specimen

 

The specimens are unacceptable as evidence of actual service mark use because it a work form which does not indicate or make reference to the identified services.  The applicant must submit three specimens showing the mark as it is used in commerce.  37 C.F.R Section 2.58.  Examples of acceptable specimens are signs, photographs, brochures or advertisements that show the mark used in the sale or advertising of the services.  TMEP section 1301.04.  The applicant must verify, with an affidavit or a declaration under 37 C.F.R. Section 2.20, that the substitute specimens were in use in commerce at least as early as the filing date of the application.  37 C.F.R. Section 2.59(a); TMEP section 905.10.

 

Specimens are unacceptable if they do not show use of the service mark in relation to the identified service.  Intermed Communications, Inc. v. Chaney, 197 USPQ 501 (TTAB 1977).  The specimens must show use of the mark "in the sale or advertising of services."  Trademark Act Section 45, 15 U.S.C. Section 1127; In re Universal Oil Products Co., 476 F.2d 653, 177 USPQ 456 (CCPA 1973); TMEP section 1301.02.  Therefore, the specimens must show the mark in reference to the particular services identified.

 

 

 

 

 

 

 

 

 

 

 

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

 

 

/Amos T. Matthews/

Examining Attorney

Law Office 108

(703) 308-9108 ext. 293

(703) 746-8108 (fax)

 

 

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 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.