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  76/087520

 

The previously advised co-pending applications are withdrawn.

 

SEC.  2(e)(1) REFUSAL IS CONTINUED AND MADE FINAL

 

As stated previously the mark merely describes a feaure of the research, testing and consulting services featuring an online web human genome project.  The genome project involves genetic research and testing for disease susceptability in human immune compromised patients.  It is noted that applicant’s services as seen in its literature pertain to a project that studies the links between genetics and disease.  The project involves  mapping the human genomes of the all the DNA within an organism.  The mark mus be considered in context with the services at issue not in the abstract as applicant is attempting to do.

 

The examining attorney must consider whether a mark is merely descriptive in relation to the identified goods/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 (C.C.P.A. 1978); In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985); In re American Greetings Corp., 226 USPQ 365 (TTAB 1985).  TMEP §1209.01(b). 

 

A term is suggestive if some imagination, thought or perception is required to determine the nature of the services from the term.  A suggestive term differs from a descriptive term, which immediately tells something about the services.  In re Aid Laboratories, Inc., 223 USPQ 357 (TTAB 1984).  A suggestive mark is registrable on the Principal Register.  TMEP §1209.01(a).

 

The fact that an applicant may be the first and only user of a merely descriptive or generic designation does not justify registration if the term is merely descriptive.  In re National Shooting Sports Foundation, Inc., 219 USPQ 1018 (TTAB 1983).  TMEP §1209.03(c). 

 

THE ABOVE REFUSAL IS CONTINUED AND MADE FINAL

 

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).

 

NOTE THE FOLLOWING:

 

Please note that the mark in an application under Trademark Act Section 1(b), 15 U.S.C. §1051(b), is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use under 37 C.F.R. §2.76 or statement of use under 37 C.F.R. §2.88 has been timely filed.  37 C.F.R. §2.47(c); TMEP §815.02, 816.02 and 1102.03.  When such an application is changed from the Principal Register to the Supplemental Register, the effective filing date of the application is the date of filing of the allegation of use.  37 C.F.R. §2.75(b); TMEP §§206.01 and 816.02.

 

 

 

 

/John C. Tingley/

Trademark Examining Attorney

Law Office 106

703-308-9106 x-266    fax 703 746 8106

ecom106@uspto.gov

6:30 a.m. to 3:00 p.m

 

 

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.