UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/243084
APPLICANT: ROLL-RITE CORPORATION
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CORRESPONDENT ADDRESS: FRANK C. NICHOLAS CARDINAL LAW GROUP 1603 ORRINGTON AVENUE SUITE 2000 EVANSTON, ILL 60201 |
RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom114@uspto.gov
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MARK: TARPSTRETCHER
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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 76/243084
This letter responds to the applicant’s communication filed with its request for reinstatement. The applicant argued that the Merely Descriptive Refusal should be withdrawn. The examining attorney has considered the applicant's arguments carefully but found them unpersuasive. For the following reasons, the refusal to register is continued and made FINAL.
Registration on the Principal Register was refused because the proposed mark merely describes the goods. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §§1209 et seq.
The applicant has applied for registration of the mark “TARPSTRETCHER” for electric gear motors for tarpaulin systems for vehicles. The definitions previously provided in the first office action for TARP and STRETCHER are incorporated herein by reference. The applicant has responded to the refusal by stating that the proposed mark is not descriptive of the applicant’s goods. The examining attorney disagrees. As noted in the initial refusal, 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 goods. 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 §1209.01(b).
Here, the mark is comprised of two words which both describe a feature of the goods. STRETCHER describes the function of the goods, namely, they perform a stretching or extending function. TARP describes what is being stretched/extended.
Contrary to applicant’s assertion, the mark is more than just “suggestive of an attribute” of the goods. A term is suggestive if some imagination, thought or perception is required to determine the nature of the goods/services from the term. A suggestive term differs from a descriptive term, which immediately tells something about the goods. In re Aid Laboratories, Inc., 223 USPQ 357 (TTAB 1984). A suggestive mark is registrable on the Principal Register. TMEP §1209.01(a). The common understanding of these two words, when used together in relation to the goods, is that they describe an actual feature of the goods. In fact, applicant’s own materials support this point. In exhibit C which describes the actual goods it states, “Named for its ability, the Tarpstretcher actually stretches the tarp down for a watertight seal.” Emphasis added.
The proposed mark is merely descriptive of the applicant's goods. Registration of the proposed mark must, therefore, be refused.
Please note that the mark in an application under Trademark Act Section 1(b), 15 U.S.C. Section 1051(b), may be eligible for registration on the Supplemental Register once an acceptable amendment to allege use under 37 C.F.R. Section 2.76 or statement of use under 37 C.F.R. Section 2.88 has been timely filed. 37 C.F.R. Section 2.47(c); TMEP section 1105.01(a)(vii). 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. Section 2.75(b); TMEP section 708.01.
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).
/ Hellen M. Bryan-Johnson /
Trademark Examining Attorney
Law Office 114
(703) 308-9114 ext 457
e-mail www.ecom114@uspto.gov
fax (703) 746-8114
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.