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  76/253199

 

This letter is in response to the applicant’s communication received onAugust 12, 2003.   

 

Registration was refused under Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1), because the subject matter for which registration is sought is merely descriptive of the services.  The examining attorney has considered applicant’s arguments but has found them unpersuasive.  For the reasons below, the refusal under Section 2(e)(1) is maintained and made FINAL.

 

The applicant applied to register the mark FINANCIAL SUMMARY for “telecommunication services, namely, electronic transmission of financial data and documents via a global computer network and wireless networks.”  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).

 

Applicant’s mark describes the purpose and feature of the services which provide “financial summaries” via  a global computer network.  If an average purchaser of applicant services were to see applicant’s mark used in connection with the services, the average purchaser would immediately understand that applicant’s services involve financial information, most likely in the form or summaries.  

 

The applicant has indicated its intention to file an amendment to the Supplemental Register once suitable specimens are available.  Thus, applicant has admitted to the descriptiveness of the mark.

 

In light of the above, the use of applicant’s proposed mark in connection with the recited services, the refusal under Section 2(e)(1) is continued and made FINAL.

 

RESPONSE TO FINAL REFUSAL

 

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. Section 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. Section 2.65(a).

 

 

/Margery A. Tierney/

Examining Attorney, Law Office 111

703-536-5277

fax: (703)746-6402

 

 

 

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.