UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/269572
APPLICANT: Columbia TriStar Television, Inc.
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CORRESPONDENT ADDRESS: LYNN S. FRUCHTER COWAN LIEBOWITZ & LATMAN P C 1133 AVENUE OF THE AMERICAS NEW YORK NY 10036-6710
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3513 ecom105@uspto.gov
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MARK: THE GUARDIAN
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CORRESPONDENT’S REFERENCE/DOCKET NO: 13078-21
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 76/269572
This letter responds to the applicant's communication filed on November 12, 2002. After due consideration of the applicant’s arguments, the refusal to register the mark on the Principal Register pursuant to Section 2(e)(1) of the Trademark Act is repeated and made final.
Registration on the Principal Register was refused for the mark THE GUARDIAN merely describes a feature or characteristic of the dramatic television series. The applicant confirms in the response that the main character in the series is a lawyer who provides legal representation of juveniles. In other words the attorney is acting as a guardian. The examining attorney previously submitted the dictionary definition of the term guardian. It is clear that a feature or characteristic of the television show is that the main character acts as a guardian. The fact that he may also have his own law practice does not obviate the fact the mark merely describes a feature or characteristic of the 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).
The applicant also lists some marks and registration numbers arguing the Office has granted registration for similar marks. First, it must be noted that merely listing the registrations does not make them of record. Secondly, third‑party registrations are not conclusive on the question of descriptiveness. The examining attorney must consider each case on its own merits. A mark which is merely descriptive is not registrable merely because other similar marks appear on the register. In re Scholastic Testing Service, Inc., 196 USPQ 517 (TTAB 1977). TMEP §1209.03(a).
The mark is merely descriptive of the services. The refusal to register the mark THE GUARDIAN on the Principal Register pursuant to Section 2(e)(1) of the Trademark Act must therefore be repeated and made final. 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).
/Karen K. Bush/
Trademark Examining Attorney, L.O. 105
(703) 308-9105 ext. 182
fax: (703) 872-9825
ecom105@uspto.gov (formal)
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.