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  76/355082

 

The assigned examining attorney has reviewed the statement of use filed on September 24, 2003 and has determined the following.

 

The examining attorney refuses registration on the Principal Register 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 examining attorney must consider whether a mark is merely descriptive in relation to the identified goods, 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). 

 

In evaluating the mark vis-à-vis the specimens, the descriptive nature of the terminology in question becomes apparent.  The specimens discuss “…style rails via A.R.M.S. repeat zero throw levers…”.  “The levers should be placed…”.  See below for pertinent definition of “throw.”  Throw level identifies a type of mount that has a switch to adjust the levers.

 

throw

 
throw (thro) verb

threw (thr¡) thrown (thron) throw·ing, throws verb, transitive

1.    To propel through the air with a motion of the hand or arm.

2.    To discharge into the air by any means: a machine that throws tennis balls; ash that was thrown by an erupting volcano.

3.    To hurl or fling with great force or speed: threw themselves on the food; jetsam that had been thrown up onto the shore.

4.    a. To hurl to the ground or floor, as in a wrestling contest. b. To cause to fall off: The horse threw its rider.

5.    Informal. To cause confusion or perplexity in; disconcert or nonplus: We didn't let our worries throw us.

6.    To put on or off hastily or carelessly: throw on a jacket.

7.    a. To put (suddenly or forcefully) into a given condition, position, or activity: threw him into a fit of laughter; threw some supper together; threw her leg over the arm of the chair. b. To devote, apply, or direct: threw all their resources into the new endeavor; threw the blame onto the others.

8.    To form on a potter's wheel: throw a vase.

9.    To twist (fibers) into thread.

10.  Games. a. To roll (dice). b. To roll (a particular combination) with dice. c. To discard or play (a card).

11.  To send forth; project: She threw me a look of encouragement.

12.  To cause to fall on or over something; cast: The rising sun threw shadows across the lawn. We threw sheets over the furniture before we painted the ceiling.

13.  To bear (young). Used of cows or horses, for example.

14.  To arrange or give (a party, for example).

15.  To move (a lever or switch) in order to activate, deactivate, or control a device.

16.  Informal. To lose or give up (a contest, for example) purposely.

17.  To abandon oneself to; have: heard the news and threw a fit.

18.  To commit (oneself), especially for leniency or support: threw himself on the mercy of the court.

19.  To deliver (a punch), as in boxing: threw a left hook.

 

 

Please note the following.

 

The examining attorney refuses registration because the proposed mark does not function as a trademark.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051, 1052 and 1127.  The proposed mark neither identifies and distinguishes the goods of the applicant from those of others nor indicates their source.  In Re Remington Products Inc., 3 USPQ2d 1714 (TTAB 1987).  TMEP §§1202 et seq.

 

The specimen of record, along with any other relevant evidence submitted with the application, is reviewed and analyzed in order to determine whether a term is being properly used as a trademark.  In re Bose Corp., 546 F.2d 893, 192 USPQ 213 (C.C.P.A. 1976); In re Volvo Cars of North America, 46 USPQ2d 1455 (TTAB 1998).  Not all words, designs, symbols or slogans used in the sale or advertising of goods or services function as marks, even if they may have been adopted with the intent to do so.  A designation cannot be registered unless ordinary purchasers would regard it as a source-indicator for the goods.  In re Manco, Inc., 24 USPQ2d 1938 (TTAB 1992); TMEP §§1202 et seq.

 

The mode of use of the mark in the specimens of record shows other terms to function as

trademarks and “throw level” to be part of the descriptive terminology “throw level mount.” 

Consumers would call the product by the other names appearing in the specimens and refer to

“throw level mount” as identifying an attribute of the goods.    

 

Further action awaits response to the above.

 

 

/Raul Cordova/

Trademark Examining Attorney

Law Office 114

703-308-9114 ext. 136

Rightfax 703-746-6429

 

 

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.