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  76/378363

 

The Office has reassigned this application to the undersigned examining attorney. 

 

The applicant’s amendment to the recitation of services has been accepted.  Upon further review of the file, the following have been noted.  The examining attorney apologizes for any inconvenience in this regard.

 

Mark is Merely Descriptive

 

The examining attorney refuses registration on the Principal Register because the proposed mark merely describes the 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 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).

 

 

Applicant proposes the mark CONGRESS for use in connection with “educational services, namely, conducting yearly exhibitions and conferences consisting of speakers, lecturers, and workshops in the field of Christian faith and spiritual renewal,” in International Class 041.  However, the mark merely describes a function or feature of the services and does not possess a separable, nondescriptive meaning.

 

The term CONGRESS is defined as “1. A formal assembly of representatives, as of various nations, to discuss problems.  2.                        The national legislative body of a nation, especially a republic.  3. CongressAbbr. Cong., C.. a. The national legislative body of the United States, consisting of the Senate and the House of Representatives. b. The two-year session of this legislature between elections of the House of Representatives. 4.  a. The act of coming together or meeting. b. A single meeting, as of a political party or other group.  5. Sexual intercourse..”[1]

 

The term is descriptive in this context as it describes a characteristic or feature of the services.  The recitation of services and specimen of record indicate that applicant seeks registration for an annual single meeting in the field of Christian faith and spiritual renewal, i.e., a “congress.”

 

Applicant may argue that the term has other meanings, but it is well settled that descriptiveness must be considered in light of the identified goods and services, 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).  Here, the term is clearly used in a manner that is descriptive for the services offered by applicant.

 

Thus, because the mark merely describes the applicant’s services and does nothing more, registration is refused under §2(e)(1) of the Trademark Act.

 

Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

 

 

/Michael P. Keating/

Trademark Attorney

Law Office 107

(703) 308-9107 x232

(703) 746-8107 fax

ecom107@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.