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  76/395492

 

This letter responds to the applicant’s communication filed on 3-26-03.

 

The applicant has (1) amended the identification of goods, and (2) argued its mark is not merely descriptive.

 

These are not acceptable.  The Section 2(e)(1) refusal is CONTINUED.

 

Upon further consideration, the examining attorney must make the following refusal.

 

MARK IS DECEPTIVELY MISDESCRIPTIVE

 

The applicant has amended the identification of goods to exclude “hobo bags.”  This is not acceptable and by the addition of this language, the proposed mark HOBO becomes misdescriptive of the goods, which include handbags and other Class 18 goods.

 

In the alternative to the merely descriptive refusal, the examining attorney refuses registration on the Principal Register because the mark is deceptively misdescriptive of the goods/services.  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/services.  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 examining attorney attaches online  evidence obtained from the search engine GOOGLE showing the descriptive nature of the term.   If the purchasing public encounters the mark HOBO on purses, they are likely to believe the goods are hobo bags.

 

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. 

 

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.

 

IDENTIFICATION OF GOODS         

 

The identification of goods is unacceptable as indefinite.   The applicant may adopt the following, if accurate:

 

handbags; backpacks; book bags; travel bags; wallets; leather keychains; briefcases; briefcase type portfolios; document cases; overnight cases; all purpose sports bags; credit card cases, in class 18.

 

Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. Section 2.71(a); TMEP section 804.09.  Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.

 

All issues  and requirements raised in the previous office action which are not dealt with here are CONTINUED.

 

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

 

 

/Anne Madden/

Trademark Examining Attorney

Law Office 103

(703) 308-9103 ext. 130

Anne.Madden@uspto.gov

(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 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.