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  76/393898

 

The examining attorney aknowledges the applicant’s response to the office action of August 20, 2002.  The disclaimer of “Softest and Wool” is rejected as discussed below and as the wording must be disclaimed together as “softest wool” because the wording is not separated by distinctive matter.  The requirement for disclaimer is maintained and made FINAL.

 

Disclaimer

The applicant must disclaim the descriptive wording "WORLD’S SOFTEST WOOL" apart from the mark as shown. Trademark Act Section 6, 15 U.S.C. Section 1056; TMEP sections 1213 and 1213.03(a).  Here, the wording is merely a laudatory phrase claiming that the applicant’s socks are composed of the softest wool in the world.  See In re Boston Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056, 1058 (Fed. Cir. 1999) (THE BEST BEER IN AMERICA for beer and ale held to be “so highly laudatory and descriptive of the qualities of [applicant’s] product that the slogan does not and could not function as a trademark to distinguish Boston Beer’s goods and serve as a indication of origin”).  It is common for producers of clothing and fabric goods to tout their goods as being the “world’s softest.”  See internet evidence and NEXIS evidence attached to the first office action.  Thus, the wording, with the generic “wool,” is merely a laudatory phrase similar to that discussed in In re Boston Beer Co.  cited above.

 

The computerized printing format for the Trademark Official Gazette requires a standard form for a disclaimer.   TMEP section 1213.08(a)(i).  A properly worded disclaimer should read as follows:

 

No claim is made to the exclusive right to use “WORLD’S SOFTEST WOOL” apart from the mark as shown.

 

See In re Owatonna Tool Co., 231 USPQ 493 (Comm'r Pats. 1983).

 

The applicant argues that the wording WORLD’S is not laudatory and cites several registrations where “world’s” is not disclaimed.    However, the registrations cited are distinguishable.

 

THE WORLD’S MOSE CREATIVE CHILDREN’S PHOTOGRAPHY ADVENTURE is a non-descriptive and unitary slogan.  Note that the generic “photography” is not disclaimed in the mark and the mark contains the suggestive “adventure.”

 

THE BEST LITTLE SUITCASE IN THE WORLD is also a non-descriptive unitary slogan where no disclaimer is proper.  Note that the generic “suitcase” is not disclaimed and the slogan contains the suggestive “little.”

 

THE FINEST BERRIES IN THE WORLD is registered under section 2(f).  Thus, the mark was deemed descriptive.

 

A brief look at office records shows that similar marks are nearly always treated as descriptive.  See the following attached examples.

 

THE WORLD’S MICROBIAL EXPERTS --section 2(f).

 

WORLD’S GREATEST –supplemental register.

 

WORLD’S FINEST SHORTS—supplemental register.

 

WORLD’S GREATEST CHEESE STEAK!—supplemental register.

 

WORLD’S LARGEST HOMEBUILDER—supplemental register.

 

WORLD’S LARGEST BUSINESS INCUBATOR—supplemental register.

 

THE WORLD’S MOST POPULAR HOTEL—supplemental register.

 

WORLD’S BIGGEST ENGAGEMENT RING STORE—section 2(f).

 

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).

 

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

 

 

 

 

/Daniel Capshaw/

Examining Attorney

Law Office 110

703-308-9110, ext. 241

ecom110@uspto.gov (Formal Responses Only)

 

 

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.