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  76/397759

 

This letter responds to the applicant's communication filed on 3-20-2003.

Registration was refused under Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1), because the subject matter for which registration is sought is merely descriptive of the identified services.

 

The examining attorney has considered the applicant's arguments carefully but has found them unpersuasive.  For the reasons below, the refusal under Section 2(e)(1) is maintained and made FINAL.

 

Substantive Refusal:

 

The applicant applied to register “A CENTURY OF SOUL” for ENTERTAINMENT SERVICES, NAMELY, AN ON-GOING RADIO PROGRAM FEATURING MUSIC in class 041.

 

The examining attorney refuses registration on the Principal Register because the proposed mark merely describes what the subject matter of the radio program, namely, that the radio program features soul music from the past 100 years. Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1); TMEP section 1209 et seq.

 

This mark “A CENTURY OF SOUL” immediately names the subject matter of the radio programming.  A century is defined as period of 100 years or each of the successive periods of 100 years before or since the advent of the Christian era.[1] Amongst followers of music, SOUL is a common term used to define soul music,[2] which is popular music developed by American Black people, combining elements of gospel music and rhythm and blues.[3]

 

The applicant disagrees and argues:

 

1-     soul has one than one meaning;

2-     there are other registration with the phrase “A CENTURY OF” registered;

 

The fact that a term may have different meanings in another context is not controlling on the question of descriptiveness.  In re Bright‑Crest, Ltd., 204 USPQ 591 (TTAB 1979).  The examining attorney must consider whether a mark is merely descriptive in relation to the identified goods, 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 (CCPA 1978); In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985). 

 

The applicant should note, that third party registrations are of little value as evidence of weakness of a mark or portion of a mark because they can not serve to establish that the marks shown therein are in use or that the public is familiar with them nor can their existence justify the registration of an applicant's mark which so resembles a registered mark as to be likely to cause confusion. In re Great Lakes Canning, Inc., 227 USPQ 483, 485 (TTAB 1985).

 

 

Supplemental Register: Intent to Use:

 

Please note that the mark in an application under Trademark Act Section 1(b), 15 U.S.C. Section 1051(b), is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use under 37 C.F.R. Section 2.76 or statement of use under 37 C.F.R. Section 2.88 has been timely filed.  37 C.F.R. Section 2.47(c); TMEP section 1105.01(a)(vii). When such an application is changed from the Principal Register to the Supplemental Register, the effective filing date of the application is the date of filing of the allegation of use.  37 C.F.R. Section 2.75(b); TMEP section 708.01.

 

Lourdes Damaris Ayala

Lourdes Damaris Ayala

Examining Attorney

LO 106

703-308-9106 X 225

Fax:703-746-8106

 

 

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.