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  76/362539

 

This letter responds to the applicant’s communication filed on March 14, 2003.

 

The examining attorney has refused registration because the mark consists of or comprises matter which may falsely suggest a  connection with the Internal Revenue Service (IRS).  Trademark Act Section 2(a), 15 U.S.C. §1052(a); TMEP §§1203.03, 1203.03(e) and 1203.03(f).  See generally University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983); University of Alabama v. BAMA‑Werke Curt Baumann, 231 USPQ 408 (TTAB 1986); In re Cotter & Co., 228 USPQ 202 (TTAB 1985); Buffett v. Chi‑Chi’s, Inc., 226 USPQ 428 (TTAB 1985).  The examining attorney has considered the applicant’s arguments carefully but found them unpersuasive.

 

As applicant appears to concede, there is a clear and unmistakable connection within the United States between the IRS and taxes.  By entry of the disclaimer now of record, applicant concedes that its goods apparently pertain to taxes and/or to IRS reporting requirements.  Accordingly, prospective consumers would easily be able to make the connection between applicant’s goods and the IRS, and would be likely to assume, incorrectly, that there is some connection or endorsement between the IRS and the goods.

 

Applicant’s reliance on the actions of the prior Examining Attorney and on allegedly analogous marks which were previously registered by the Office is misplaced.  While the Office strives for a consistent approach in examination, there is no obligation to perpetuate a clear error.  Morover, such prior determinations have no precedential effect and each case must be determined on its own merits.  See: In re Citibank N.A., 2225 USPQ 612, 616 (TTAB 1985); In re Hunter Publishing Co., 204 USPQ 957, 961 (TTAB 1979). 

 

Similarly, applicant’s reference to a family of “GOLD” marks is immaterial herein, as the presence of the term “IRS” renders the entire mark subject to refusal under Section 2(a), regardless of any connection to other somewhat related marks owned by applicant.  The prohibition of Section 2(a) is absolute and cannot be overcome by use of disclaimers or by claims of acquired distinctiveness.

 

The refusal of registration is repeated and made FINAL.

 

Further action awaits response to the above.

 

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).

 

 

 

 

 

 

 

/David H. Stine/

Trademark Attorney

Law Office 114

(703)308-9114 x154

ecom114@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

 

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