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  76/374943

 

 

FINAL OFFICE ACTION

 

This letter responds to the applicant’s communications filed on March 22, 2004 and January 24, 2003 in which the applicant 1) advised the office of the abandonment of the prior pending application; 2) argued against refusal to register the mark pursuant to Section 2(e) and 3) argued against the refusal to register the mark pursuant to Section 2(d).  Items 1 and 3 are acceptable.  The applicant must note the following.

 

The refusal to register the mark pursuant to Section 2(d) is WITHDRAWN.

 

The refusal under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1), is now made FINAL for the reasons set forth below.  37 C.F.R. §2.64(a).

 

Mark is Merely Descriptive

The examining attorney refused registration on the Principal Register because the proposed mark merely describes the goods/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/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).

 

The applicant has applied to register the mark VSC RATECALC for computer software, namely, a calculator program for use on personal computers to calculate and quote rates for vehicle service contracts (emphasis added).  The term VSC is an acronym for Vehicle Service Contracts (see evidence in First Office Action).  The examining attorney also refers to the excerpted articles from the examining attorney's search in a computerized database in which VSC W/20 “VEHICLE SERVICES CONTRACT” appeared.  Representative stories are attached.  The applicant argues that “[e]ven in the context of the goods, namely computer software, the term VSC would not describe a function of the applicant’s goods.”  The applicant failed to note the rest of the identification of goods, which states the specific function of the software.   It CALCULATES and quote RATES for VSCs or Vehicle Service Contracts. 

 

The applicant also argues that VSC has other meanings.  Descriptiveness is considered in relation to the relevant goods and/or services.  The fact that a term may have different meanings in other contexts is not controlling on the question of descriptiveness.  In re Chopper Industries, 222 USPQ 258 (TTAB 1984); In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979); In re Champion International Corp., 183 USPQ 318 (TTAB 1974); TMEP §1209.03(e).  Attached is evidence from the applicant’s website showing that the term VSC is meant to refer to Vehicle Services Contracts. 

 

The refusal is continued and made FINAL.

 

Options

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).

 

 

NOTICE:  TRADEMARK OPERATION RELOCATING OCTOBER AND NOVEMBER  2004

 

The Trademark Operation is relocating to Alexandria, Virginia, in October and November 2004.  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, registration owners, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at www.uspto.gov.

 

To reach the undersigned attorney by telephone after October 19, 2004, please call (571) 272-9227.  Thank you.

 

 

/Cheryl L. Steplight/

Trademark Attorney

Law Office 103

703.308.9103 x198

703.746.8103 (fax)

 

 

 

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 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.