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  76/223147

 

This letter responds to the applicant’s communication filed on May 19, 2003.

 

Applicant seeks to register the mark “Insta-grab” for fishing reels.  Registration has been refused because the specimen submitted to show use of the mark as a source indicator for the goods does not show “Insta-grab” used to indicate the source of the fishing reels.  Because the specimen is unacceptable to show used of the mark for applicant’s goods, the requirement for an appropriate specimen, as is stated in Trademark Act § 1(a)(1), has not been met, and registration has been refused.

 

Applicant seeks to register the designation “Insta-grab” for fishing reels.  The specimen consists of a package for the goods with the mark contained in the wording “Insta-grab™ Design For Instant Retrieval”. Nowhere else does it appear on the specimen.  In addition, the wording in which the mark appears forms part of a vertically listed set of phrases touting the attributes of applicant’s fishing reels, for example, “Two Bearing Design” “Heavy Duty Metal Gears” and “Comes Filled With Line”.  Does “Insta-grab” identify the source of applicant’s fishing reels?

 

The Court of Customs and Patent Appeals (Court) in the case of In re Bose Corp., doing business as Interaudio Systems, 192 USPQ 213 (CCPA, 1976), dealt with a situation similar to the fact situation here.  In its decision the Court stated trademark usage truisms, which were applicable both in that case and here.  The Court stated, at pages 215 and 216:

 

The Trademark Act is not an act to register mere words, but rather to register trademarks.  Before there can be registration, there must be a trademark, and unless words have been so used they cannot qualify. * * * Thus, it is essential for registration that words first become a trademark, i.e., “any word, name, symbol, or device or any combination thereof adopted and used by a manufacturer or merchant to identify his goods and distinguish them from those manufactured or sold by others.”  Indeed, the classic function of a trademark is to point out distinctively the origin of the goods to which it is attached.

 

An important function of specimens in a trademark application is manifestly, to enable the PTO to verify the statements made in the application regarding trademark use.  In this regard, the manner in which an applicant has employed the asserted mark, as evidence by the specimens of record, must be carefully considered in determining whether the asserted mark has been used as a trademark with respect to the goods named in the application.  

 

In the Bose case, supra, the Court refused to register the mark “Syncom”, even though it appeared on the specimens of record, because it did not identify the applicant’s goods but another product.  In the present situation, the mark “Insta-grab” is used to identify the design of applicant’s goods involving instant retrieval.  Although the common law trademark symbol is used with the word “Insta-grab”, the phrase “Insta-grab design” clearly indicates that “Insta-grab” identifies some design feature rather than the goods themselves.

 

In further support of the contention that a mark may appear on a specimen used to identify the source of a producer’s goods and yet not identify the source of those goods are cited the following cases:  In re Packaged Ice Inc., 50 USPQ2d 1361 (TTAB, 1999), and In re Information Builders Inc., 213 USPQ 593 (TTAB, 1982).  In Packaged Ice, supra, the wording “Packaged Ice Inc.” in a seal with the design of ice cubes appeared on containers for ice.  It was determined that while the mark identified the source of the ice, it did not identify the producer of the plastic bags for which the applicant sought trademark registration of its mark.  Similarly, in Information, supra, the word “Fidel” was used to identify the source of a computer program, but not used to show the source of a service involving the providing of computer programs, which were to be used by others.  Here, “Insta-grab” is not used to indicate the source of applicant’s fishing reels, but rather, a feature of those goods.  In the present situation, it appears that the words “Synergy” or “Shakespeare” are the source indicators for applicant’s fishing reels.

 

What does “Insta-grab” identify?  In Office Action dated October 4, 2002, copies of pages taken from applicant’s web site show the designation “Insta-grab” used to identify a component of applicant’s goods -- the pickup pins --, rather than fishing reels.  Applicant has objected to the inclusion of this material as evidence of use of the mark.  Applicant argues that the use of the mark on the specimen, rather than as it appears on applicant’s web site, is the means by which a determination of the source identifying character of applicant’s mark must be determined.  Applicant is correct.  It was stated in Bose, supra, that the specimen submitted by an applicant is the material to be studied in order to determine whether a mark is appropriately used as a source identifier.  However, advertisements may be submitted as evidence of a purchaser’s perception of a mark.  See: Raccioppi v. Apogee Inc., 47 USPQ2d 1368 (TTAB, 1998).  While applicant’s specimen clearly fails to show the mark “Insta-grab” used as a source identifier for fishing reels, the addition of applicant’s web site advertisements substantiate this view.  “Insta-grab” identifies a component of applicant’s goods rather than the goods themselves.

 

The refusal to register the mark “Insta-grab” because it is not used as a source identifier for fishing reels as was stated in Office Action dated November 19, 2002, is here repeated and made final.

 

 

 

 

/David C. Reihner/, Examining Attorney

Law Office 111, 703-308-9111 ext. 469

703-746-8107 fax.  ecom107@uspto.gov

 

 

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.