UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/370848
APPLICANT: U.S. Pharmaceutical Corporation
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CORRESPONDENT ADDRESS: WILLIAM H. BREWSTER KILPATRICK STOCKTON LLP 1100 PEACHTREE STREET, SUITE 2800 ATLANTA, GEORGIA 30309
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom115@uspto.gov
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MARK: USC
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CORRESPONDENT’S REFERENCE/DOCKET NO: 39073/195912
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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This Office Action responds to applicant’s correspondence dated December 3, 2002. In its response applicant amended the identification of goods in international class 5 which is accepted and made of record. Additionally, applicant argued against the requirement for a disclaimer. The examining attorney has considered the applicant's arguments carefully however, the arguments are unpersuasive. For the reasons discussed below, the requirement for a disclaimer is continued and now made FINAL.
Disclaimer
The examining attorney initially required that the applicant disclaim the descriptive wording "US" apart from the mark as shown. Trademark Act Section 6, 15 U.S.C. Section 1056; TMEP sections 1213 and 1213.02(a). The examining attorney stated that the wording is primarily merely descriptive because it described the geographic location from which the goods emanate.
Geographical Descriptiveness
A mark or element of a mark is merely geographically descriptive under Trademark Act Section 2(e)(2), 15 U.S.C. 1052(e)(2), if the primary significance of the term is geographic and applicant’s goods/services come from the geographical place named in the mark. If these two elements exist then a public association of the goods/services with the place is presumed. In re JT Tobacconists, 59 USPQ2d 1080 (TTAB 2001); In re U.S. Cargo, Inc., 49 USPQ2d 1702 (TTAB 1998); In re Carolina Apparel, 48 USPQ2d 1542 (TTAB 1998); In re Chalk’s International Airlines Inc., 21 USPQ2d 1637 (TTAB 1991); In re California Pizza Kitchen, 10 USPQ2d 1704 (TTAB 1989); In re Handler Fenton Westerns, Inc., 214 USPQ 848 (TTAB 1982). TMEP §1210.04(b).
The examining attorney has determined that the primary significance of the term “US” is geographic. The fact that a term may have other meanings does not necessarily negate the basis for refusal. In re Opryland USA Inc., 1 USPQ2d 1409 (TTAB 1986); In re Cookie Kitchen, Inc., 228 USPQ 873 (TTAB 1986). TMEP §1210.02(b).
Trademark Act Section 6(a), 15 U.S.C. Section 1056(a), permits the Office to require a disclaimer of an unregistrable component of a mark. Trademark Act Section 2(e), 15 U.S.C. Section 1052(e), bars the registration of a mark which is merely descriptive or deceptively misdescriptive, or primarily geographically descriptive of the goods. Therefore, the Commissioner may require the disclaimer of a portion of a mark which, when used in connection with the goods or services, is merely descriptive or deceptively misdescriptive, or primarily geographically descriptive. If an
applicant does not comply with a disclaimer requirement, the examining attorney may refuse registration of the entire mark. TMEP section 1213.01(b).
In this case the primary significance of the term US is geographic. Additionally, the goods identified in the application come from the place named, the United States, as such a public association of the goods with the place is presumed.
Applicant argues that the mark is unitary thereby not requiring a disclaimer.
A mark or portion of a mark is considered "unitary" when it creates a commercial impression separate and apart from any unregistrable component. That is, the elements are so merged together that they cannot be divided to be regarded as separable elements. If the matter comprising the mark or relevant portion of the mark is unitary, no disclaimer of an element, whether descriptive, generic or otherwise, is required. TMEP section 1213.06(a)
The applicant argues that the mark when viewed as a whole creates a commercial impression that is separate and apart from the letters “US” alone and that the “US” is surrounded by geometric shapes and thus are “physically connected”. Such is not the case. The applicant cites T.M.E.P. Section 807.13 in support of this physically connected argument however, T.M.E.P. Section 807.13 is titled “Marks with Motion” and does not discuss marks being physically connected or any aspect of unitary marks.
The applicants mark is a composite mark made up a several design elements and the lettering “US”. A “composite” mark may consist of a word or words combined with a design or designs; it may consist solely of words, when there are separable word elements; or it may consist solely of separable design elements. An unregistrable component of a composite mark is subject to disclaimer. However, if a composite mark (or portion thereof) is “unitary,” an individual component of the mark (or of the unitary portion) that would otherwise be unregistrable need not be disclaimed. See TMEP §§1213.05 et seq. The same principles apply to disclaimer of an unregistrable component of a mark, whether the mark is a combination of wording and designs or consists entirely of wording or entirely of designs. TMEP 1213.03
T.M.E.P. Section 1210.08 discusses a “Disclaimer of Geographic Terms in Composite Marks” and states that “When appropriate, the applicant will be required to disclaim a separable component of a mark that is primarily geographically descriptive under §2(e)(2). A disclaimer is appropriate in this situation if the geographic component is a separable feature of the mark, and the composite mark includes an inherently distinctive, non-disclaimed component (e.g., coined, arbitrary, fanciful or suggestive wording or design).” Such is the case here as the elements of the mark are separable.
A mark or portion of a mark is considered “unitary” when it creates a commercial impression separate and apart from any unregistrable component. That is, the elements are so merged together that they cannot be divided to be regarded as separable elements. If the matter that comprises the mark or relevant portion of the mark is unitary, no disclaimer of an element, whether descriptive, generic or otherwise, is required. For example, a descriptive word can be combined with nondescriptive wording in such a way that the descriptive significance of the word in relation to the goods is lost and the combination functions as a unit. This happens when the combination itself has a new meaning. An example is the term “Black Magic,” which has a distinct meaning of its own as a whole. The word “black” is not intended to have color significance in relation to the goods, and should not be disclaimed even if the mark is applied to goods that are black in color.
The following cases the marks were found not to be unitary: Dena Corp. v. Belvedere International Inc., 950 F.2d 1555, 21 USPQ2d 1047 (Fed. Cir. 1991) (EUROPEAN FORMULA above a circular design on a dark square or background considered not unitary); In re Lean Line, Inc., 229 USPQ 781 (TTAB 1986) In re EBS Data Processing, Inc., 212 USPQ 964, 966 (TTAB 1981) (PHACTS POCKET PROFILE, for personal medication history summary and record forms, considered not unitary; refusal to register in the absence of a disclaimer of “POCKET PROFILE” affirmed. “A disclaimer of a descriptive portion of a composite mark is unnecessary only where the form or degree of integration of that element in the composite makes it obvious that no claim other than of the composite would be involved. That is, if the elements are so merged together that they cannot be regarded as separable elements, the mark is a single unitary mark and not a composite mark and no disclaimer is necessary.”);
Here the geometric design elements of the composite mark are inherently distinctive and the US element is clearly separable. This is further illustrated by the applicant’s use of the mark on the specimen of record where the geometric shapes are colored maroon and pink respectively and create a block open to one side with the letters “US” clearly set apart and standing out printed in black and white. A person looking at the mark would be drawn immediately to the US portion of the mark. The elements making up this mark are not so merged together or integrated that they cannot be divided to be regarded as separable elements. As such the US element is separable and must be disclaimed as being geographically descriptive. The requirement that the word element be disclaimed is maintained and now made FINAL.
The computerized printing format for the Trademark Official Gazette requires a standard form for a disclaimer. TMEP section 1213.09(a)(i). A properly worded disclaimer should read as follows:
No claim is made to the exclusive right to use US apart from the mark as shown.
See In re Owatonna Tool Co., 231 USPQ 493 (Comm'r Pats. 1983).
Please note that a disclaimer does not remove the disclaimed matter from the mark. It is simply a statement that the applicant does not claim exclusive rights in the disclaimed wording or design apart from the mark as shown in the drawing.
(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. Section
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. Section 2.65(a).
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.
Jeff DeFord
c/o Marc Leipzig
1921 Westmoreland Street
McLean, Virginia 22101
USA x 197
jeffrey.deford@uspto.gov