UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/235979
APPLICANT: TEAC America, Inc.
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CORRESPONDENT ADDRESS: ANTONY J. McSHANE TRADEMARK ADMINSTRATOR KATTEN MUCHIN ZAVIS 525 W MONROE ST STE 1600 CHICAGO IL 60661-3649 |
RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom103@uspto.gov
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MARK: SMART CONTROL
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS:
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Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 76/235979
This letter responds to the applicant’s communication filed on May 29, 2003. The amendments contained in the above-referenced response, with the exceptions cited below, are accepted and entered into the record.
If the deficiency in a specimen amounts to failure to use the subject matter as a trademark and/or service mark, the examining attorney should issue a refusal of registration on the ground that the subject matter does not function as a mark, in addition to requiring a substitute specimen. The statutory basis for refusal is 15 U.S.C. §§1051, 1052 and 1127 for trademarks, or 15 U.S.C. §§1051, 1053 and 1127 for service marks. See TMEP §§1202 et seq. regarding matter that does not function as a trademark, and TMEP §§1301.02 et seq. regarding matter that does not function as a service mark. TMEP §904.11.
Pending an adequate response to the specimen requirement, the examining attorney refuses registration under Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051, 1052 and 1127, because the record does not show use of the proposed mark as a trademark. TMEP §§1202 et seq.
Disclaimer
The applicant must insert a disclaimer of the following in the application. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.08(a)(i). The applicant provides a “control feature” for electronic data recording equipment. The applicant must insert the required disclaimer even if registration of the mark is sought on the Supplemental Register or on the Principal Register under Section 2(f), because the term is generic for the goods. In re Wella Corp., 565 F.2d 143, 196 USPQ 7 (C.C.P.A. 1977); In re Creative Goldsmiths of Washington, Inc., 229 USPQ 766 (TTAB 1986); In re Carolyn’s Candies, Inc., 206 USPQ 356 (TTAB 1980); TMEP §1213.03(b).
A properly worded disclaimer should read as follows:
No claim is made to the exclusive right to use CONTROL apart from the mark as shown.
The specimen requirement of the initial Office Action is CONTINUED. The specimen does not meet all of the requirements for a catalog. Please note that the consumer has to go to a different site to obtain the information necessary to order the goods, (e.g., a phone number, mailing address, or e-mail address). Thus, the components of an online catalog are missing from the site submitted.
Again, pending an adequate response to the specimen requirement, the amendment to the Supplemental Register is unacceptable.
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
Tracy Cross
/Tracy Cross/
Examining Attorney
Law Office 103
Phone: (703) 308-9103 ext. 224
Fax: (703) 746-8103
Email: ecom103@uspto.gov
FEE INCREASE EFFECTIVE JANUARY 1, 2003
EFFECTIVE JANUARY 1, 2003, THE FEE FOR FILING AN APPLICATION FOR TRADEMARK REGISTRATION WILL BE INCREASED TO $335.00 PER INTERNATIONAL CLASS. THE USPTO WILL NOT ACCORD A FILING DATE TO APPLICATIONS THAT ARE FILED ON OR AFTER THAT DATE THAT ARE NOT ACCOMPANIED BY A MINIMUM OF $335.00.
ADDITIONALLY, THE FEE FOR AMENDING AN EXISTING APPLICATION TO ADD AN ADDITIONAL CLASS OR CLASSES OF GOODS/SERVICES WILL BE $335.00 PER CLASS FOR CLASSES ADDED ON OR AFTER JANUARY 1, 2003.
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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.