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  76/385907

 

This letter responds to the applicant's communication filed on January 14, 2003.

 

The identification of goods, claim of prior registration and declaration are acceptable.

 

The refusal to register under Section 2(d) is withdrawn.

 

The refusal to register under Section 2(e)(1) is continued and maintained, subject to a determination of whether the mark is deceptively misdescriptive. 

 

The foreign registration requirement is continued and maintained.

 

Upon reviewing applicant’s responsive arguments, the examining attorney issues the following refusal.

 

Deceptively Misdescriptive

The examining attorney refuses registration on the Principal Register because the mark is deceptively misdescriptive of the goods.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §1209.04. 

 

A mark is descriptive if it conveys an accurate or true idea of an ingredient, quality, characteristic, function or feature of the relevant goods.  If the idea conveyed by the mark is false, and also plausible, then the term is deceptively misdescriptive and is unregistrable under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1).  In re Woodward & Lothrop Inc., 4 USPQ2d 1412 (TTAB 1987); In re Ox‑Yoke Originals, Inc., 222 USPQ 352 (TTAB 1983).  TMEP §1209.04. 

 

The Trademark Act does not prohibit the registration of misdescriptive terms unless consumers who encounter the mark are likely to believe the misrepresentation.  Binney & Smith Inc. v. Magic Marker Industries, Inc., 222 USPQ 1003 (TTAB 1984); TMEP §1209.03.  TMEP §1209.04. 

 

The test for deceptive misdescriptiveness has two parts:  (1) does the mark misdescribe the goods, and (2) are consumers likely to believe the misrepresentation?  In re Quady Winery, Inc., 221 USPQ 1213, 1214  (TTAB 1984).  TMEP §1209.04.  

 

Applicant’s mark is FINEWOODS.  As shown in the attachments to the first office action, fine woods refers to certain types of high quality wood.  Applicant states that applicant’s goods are not made from fine woods, and, in fact, that the goods are not exclusively even limited to wood.  Consumers are likely to believe that the goods are made from wood, and, in particular, fine wood. Because applicant’s goods are not made from fine wood, or even made from wood, applicant’s mark misdecribes the goods and consumers are likely to believe the misrepresentation.

 

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.  If the applicant has questions regarding the status of the application, the applicant should telephone the status line at 703-305-8747.

 

Fee increase effective January 1, 2003

Effective January 1, 2003, the fee for filing an application for trademark registration will be increased to $335.00 per International Class.  The USPTO will not accord a filing date to applications that are filed on or after that date that are not accompanied by a minimum of $335.00. 

 

Additionally, the fee for amending an existing application to add an additional class or classes of goods/services will be $335.00 per class for classes added on or after January 1, 2003.

 

/Rebecca L. Gilbert/

Trademark Attorney

Law Office 113

703-308-9103 ex 119

ecom113@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.