UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

Serial Number  76/367099

 

The following legal authorities govern the processing of trademark and service mark applications by the Office:  The Trademark Act, 15 U.S.C. §§1051 et seq., the Trademark Rules of Practice, 37 C.F.R. Part 2, and the Office’s Trademark Manual of Examining Procedure (TMEP) (4th ed., 2005), available on the United States Patent and Trademark Office web site at http://www.gov.uspto.report/main/trademarks.htm

 

This application is removed from suspension now that SN 78080601 has abandoned and 76365913 has registered [Reg. no. 3172773 ].  But that registration is withdrawn as a potential bar in light of applicant’s co-existing Reg. no. 2700280 for the identical mark and almost identical uses in issue here.

 

Claim of Ownership

 

If the applicant is the owner of Registration No. 2700280, the applicant must submit a claim of ownership.  37 C.F.R. §2.36; TMEP §812.

 

Column, Feature or Section of a Publication-  FINAL refusal

 

Registration is refused because the proposed mark identifies only a portion of applicant’s publication.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051-1052 and 1127; TMEP §§1202.07 et seq.  Periodically issued portions of an applicant’s publication, such as columns or features not promoted as separate articles of commerce, are integral elements of the complete publication and are therefore not considered separate goods in trade.  TMEP §1202.07(a).

 

Terms adopted to distinguish one section of the publication from other sections of the same publication do not perform a trademark function unless the section is advertised or promoted separate and apart from the publication.  In re Broad Publ’ns, Inc., 135 USPQ 374, 375 (TTAB 1962) (citing Ex parte Meredith Publ’g Co., 109 USPQ 426, 426 (Comm’r Pats. 1956)).  When selecting a publication, purchasers rely on the mark identifying the complete publication as a source indicator and are normally unfamiliar with feature or section titles. 

 

The specimen of use shows that NET.WORKER appears in “Network World April 21, 2000” at page 49. 

 

Applicant may respond to this refusal by satisfying one of the following, as appropriate:

 

(1)   Submitting evidence that the section/feature is in fact separate goods in trade.  Syndicated features/columns, for example, are considered separate goods in trade.  TMEP §1202.07(a)(i).  If applicant’s sections or portions are featured in publications other than those of applicant (whether syndicated or not), they may be considered separate goods in trade.

 

(2)   Submitting evidence of acquired distinctiveness under Section 2(f) of the Trademark Act, 15 U.S.C. §1052(f).  Applicant must present sufficient evidence establishing that the section or portion is recognized by readers or others in the publishing trade apart from applicant’s complete publication or other section titles in the publication.  TMEP §1202.07(a)(ii).

 

(3)   Amending to the Supplemental Register.  Marks that identify non-syndicated columns or sections of printed publications which have not yet acquired distinctiveness are registrable on the Supplemental Register.  TMEP §1202.07(a)(ii).

 

 

Distinctiveness under Section 2(f)

 

Applicant may seek Principal Register registration under Trademark Act Section 2(f), 15 U.S.C. §1052(f), by claiming acquired distinctiveness through ownership of U.S. Registration 2700280.  To do so, applicant must submit the following statement, if accurate:

 

The mark has become distinctive of the goods and/or services as evidenced by ownership of U.S. Registration 2700280 on the Principal Register for the same mark for related goods or services. 

 

37 C.F.R. §2.41(b); TMEP §§1212.04 et seq.

 

Applicant may also simply delete “AND SUPPLEMENTS SOLD THEREWITH, COLUMNS, SECTIONS” from the claimed goods and proceed forward without claiming Section 2(f).  However, in that case a substitute specimen of use showing use on one of the remaining claimed goods would be required. 

 

 

 

 

 

/G. Mayerschoff/

Trademark Attorney, LO-106

Hrs. 8:30 am- 6pm

571-272-9325

Fax- 571-273-9106

 

 

If applicant fails to respond to this final action within six months of the mailing date, the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond to this final action by: 

 

(1)   submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); and/or

 

(2)   filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).

 

In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2).  37 C.F.R. §2.64(a).  See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matters.  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above, and include the serial number, law office number, and examining attorney’s name.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

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