UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

PRIORITY ACTION

 

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE.  This case will be given priority as an amended case if you respond to the requirements stated below within two months.

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.

 

Serial Number  76/257961

 

The Office has reassigned this application to the undersigned examining attorney.

 

The following issues regarding the Statement of Use were discussed in communication with Alan Samlan on June 5, 2003.

 

Mark is Merely Descriptive

The examining attorney refuses registration on the Principal Register because the proposed mark merely describes the goods/services.  Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1); TMEP §§ 1209 et seq.  This issue was raised in the initial examination, and the applicant responded that “’Puck’ refers to a hockey puck and has no relevance to a vanity case.”  But as applicant’s specimen demonstrates, the goods are vanity cases used for promotional purposes in the shape of a hockey puck.

 

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/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 §1209.01(b).

 

Applicant seeks to register the mark “PROMOPUCK.”   The mark is made up of two terms: the term, “PROMO” means, “A promotional presentation, such as a television spot, radio announcement, or personal appearance.”[1]  The term “PUCK” means, “A hard rubber disk used in ice hockey as the playing and scoring medium.”[2]

 

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). 

 

The applicant has applied to register the mark PROMOPUCK for goods/services identified as vanity and jewelry cases and boxes sold empty for holding promotional items.  The specimen shows that the goods are in the shape of a hockey puck with the tag line “The Coolest Puck Off Ice.”  The specimen also states, “With a personally customized label, it can promote you as it supplies your customers.”   Thus the mark is merely descriptive of the goods/services.  It is not necessary that a term describe all of the purposes, functions, characteristics or features of the goods/services to be merely descriptive.  It is enough if the term describes one attribute of the goods/services.  In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973).  TMEP §1209.01(b). 

 

Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.  If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following items.

 

Amendment to Supplemental Register Suggested

Although the examining attorney has refused registration on the Principal Register, the applicant may amend the application to seek registration on the Supplemental Register.  Trademark Act Section 23, 15 U.S.C. §1091; 37 C.F.R. §§2.47 and 2.75(a); TMEP §§801.02(b), 815 and 816 et seq.

 

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.

 

Specimen Not Acceptable -- SOU

The specimen is unacceptable as evidence of actual trademark because it appears to be a promotional brochure.  Invoices, announcements, order forms, bills of lading, leaflets, brochures, publicity releases and other printed advertising material generally are not acceptable specimens.  In re Bright of America, Inc., 205 USPQ 63 (TTAB 1979); TMEP §§904.05 and 904.07.  See In re Ultraflight Inc., 221 USPQ 903 (TTAB 1984).  The applicant must submit a specimen showing the mark as it is used in commerce.  37 C.F.R. §§2.56 and 2.88(b)(2).  Examples of acceptable specimens are tags, labels, instruction manuals, containers, and photographs that show the mark on the goods or packaging.  TMEP §§904.04 et seq.  The applicant must verify, with an affidavit or a declaration under 37 C.F.R. §2.20, that the substitute specimen was in use in commerce prior to the expiration of the time allowed to the applicant for filing a statement of use.  37 C.F.R. §2.59(b); TMEP §§904.09 and 1109.09(b).

 

A specimen may be seen as a catalog or similar display associated with the goods if the following are provided:  (1) it includes a picture of the relevant goods; (2) it shows the mark sufficiently near the picture of the goods to associate the mark with the goods; and (3) it includes the information necessary to order the goods, (e.g., a phone number, mailing address, or e-mail address).  Any form of advertising that satisfies these criteria will be construed as a display associated with the goods.  It is not necessary that the specimen list the price of the goods.  TMEP § 904.06(a).  Applicant’s specimen does not show the information necessary to order the goods.

 

If an amendment of the dates‑of‑use clause is necessary in order to state the correct dates of first use, the applicant must verify the amendment with an affidavit or a declaration in accordance with 37 C.F.R. §2.20.  37 C.F.R. §2.71(c); TMEP §§903.05 and 1109.09(a).

 

The statement supporting use of the substitute specimen must read as follows: 

 

The substitute specimen was in use in commerce prior to the expiration of the time allowed to the applicant for filing a statement of use. 

 

The applicant must sign this statement either in affidavit form or with a declaration under 37 C.F.R. §2.20; TMEP §§904.09 and 1109.09(b). 

 

The following is a properly worded declaration under 37 C.F.R. Section 2.20.  At the end of the response, the applicant should insert the declaration signed by someone authorized to sign under 37 C.F.R. § 2.33(a).

 

The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that the facts set forth in this application are true; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.

 

_____________________________

                (Signature)

_____________________________

(Print or Type Name and Position)

_____________________________

                                                                                    (Date)

 

 

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.

 

 

 

/M. Catherine Faint/

Trademark Attorney

Law Office 103

phone: (703) 308-9103 x225

fax: (703) 746-8103

ecom103@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