UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/301399
APPLICANT: Armor Brands, Inc.
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: COVERT
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS: |
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 76/301399
This letter responds to applicant’s communication filed on August 25, 2004.
Ms. Mateja is no longer with this Office: prosecution of this application has been transferred to the undersigned.
The receipt of the statement of use gives rise to the following new issue.
Registration is refused because the proposed mark merely describes a characteristic of applicant’s goods and/or services. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §§1209 et seq.
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 and/or 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). A mark that describes an intended user of a product or service is also merely descriptive within the meaning of Section 2(e)(1). Hunter Publishing Co. v. Caulfield Publishing Ltd., 1 USPQ2d 1996 (TTAB 1986); In re Camel Mfg. Co., Inc., 222 USPQ 1031 (TTAB 1984); In re Gentex Corp., 151 USPQ 435 (TTAB 1966).
Applicant’s mark is COVERT for protective clothing, namely bulletproof vests. The specimen indicates that the vests are specifically designed for covert use (“specially designed where more concealability is needed for our Federal Government/Military customers”). The term “covert” is defined below:
cov·ert
cov·ert (kùv¹ert, ko¹vert, ko-vûrt¹)
adjective
1. Not openly practiced, avowed, engaged in, accumulated, or shown: covert military operations; covert funding for the rebels. See synonyms at secret.
2. Covered or covered over; sheltered.
3. Law. Being married and therefore protected by one's husband.
noun
1. A covering or cover.
2. a. A covered place or shelter; hiding place. b. Thick underbrush or woodland affording cover for game.
3. Zoology. One of the small feathers covering the bases of the longer feathers of a bird's wings or tail.
4. A flock of coots. See synonyms at flock1.
[Middle English, from Old French, from past participle of covrir, to cover.
See cover.]
— cov¹ert·ly adverb
— cov¹ert·ness noun[1]
As the specimen makes clear, applicant’s goods are specially designed bulletproof vests that will not openly show, in other words, covert vests. The proposed mark is merely descriptive of a central characteristic of the goods.
Although the trademark examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
If applicant believes that its mark has acquired distinctiveness, that is, that it has become a distinctive source-indicator for the goods and/or services, then applicant may seek registration on the Principal Register under Trademark Act Section 2(f), 15 U.S.C. §1052(f). Applicant must establish acquired distinctiveness by a preponderance of the evidence. Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001 (Fed.Cir. 1988). This evidence may include specific dollar sales under the mark, advertising figures, samples of advertising, consumer or dealer statements of recognition of the mark as a source identifier, and any other evidence that establishes the distinctiveness of the mark as an indicator of source. See In re Ideal Indus., Inc., 508 F.2d 1336, 184 USPQ 487 (C.C.P.A. 1975); In re Instant Transactions Corp., 201 USPQ 957 (TTAB 1979). This Office will decide each case on its own merits.
To determine whether the proposed mark has acquired distinctiveness, the trademark examining attorney will consider the following factors: (1) how long applicant has used the mark; (2) the type and amount of advertising of the mark; and (3) applicant’s efforts to associate the mark with the goods or services identified in the application. See Ralston Purina Co. v. Thomas J. Lipton, Inc., 341 F. Supp. 129, 173 USPQ 820 (S.D.N.Y. 1972); In re Packaging Specialists, Inc., 221 USPQ 917 (TTAB 1984); 37 C.F.R. §2.41; TMEP §§1212, 1212.01 and 1212.06.
Although the trademark examining attorney has refused registration on the Principal Register, applicant may respond to the stated refusal(s) under Section 2(e)(1) by amending 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.
If the applicant has any questions regarding this Office action, please telephone the assigned examining attorney.
NOTICE: TRADEMARK OPERATION RELOCATION
The Trademark Operation has relocated to Alexandria, Virginia. Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:
Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451
Applicants, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at http://www.gov.uspto.report/teas/index.html.
/Jeri Fickes/
Trademark Examining Attorney
Law Office 108
571/272-9157
571/273-9108 fax
How to respond to this Office Action:
You may respond formally using the Office's Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://eteas.gov.uspto.report/V2.0/oa242/WIZARD.htm and follow the instructions therein, but you must wait until at least 72 hours after receipt if the office action issued via e-mail). PLEASE NOTE: Responses to Office Actions on applications filed under the Madrid Protocol (Section 66(a)) CANNOT currently be filed via TEAS.
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.
[1]The American Heritage® Dictionary of the English Language, Third Edition copyright © 1992 by Houghton Mifflin Company. Electronic version licensed from INSO Corporation; further reproduction and distribution restricted in accordance with the Copyright Law of the United States. All rights reserved.