UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

EXAMINER’S AMENDMENT/PRIORITY ACTION

 

OFFICE SEARCH:  The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d).  TMEP section 704.02.   

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE.   This case will be given priority as an amended case if you respond to the requirements stated below within two months. 

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.

 

 

Serial Number 76/400795

 

EXAMINER'S AMENDMENT

 

In accordance with the authorization granted by Paul E. Fahrenkopf on July 12, 2004, the application has been AMENDED as indicated below. 

 

Identification of Goods and Services

The identification of goods and services is amended by adding the following language to International Class 42.

 

·        Insert the wording “and consultation relating thereto” after “computer services, namely, designing and implementing web sites for others.”

 

·        Insert the wording “providing electronic verification of on-line orders of digital content and generating electronic permission codes which then allow users to access said digital content.”

 

·        Insert the wording “providing temporary use of non-downloadable computer software for tracking freight and packages over computer networks, intranets and the internet.”

 

 

 

PRIORITY ACTION

 

This case will be given priority as an amended case if you respond to the requirements stated below within two months.

 

Disclaimer

The applicant must make the following disclaimer:

 

No claim is made to the exclusive right to use EXCELLENCE IN PARTNER LOGISTICS apart from the mark as shown.

 

Trademark Act Section 6, 15 U.S.C. Section 1056; TMEP section 1213.  The Office can require an applicant to disclaim exclusive rights to an unregistrable part of a mark, rather than refuse registration of the entire mark.  Trademark Act Section 6(a), 15 U.S.C. §1056(a).  Under Trademark Act Section 2(e), 15 U.S.C. §1052(e), the Office can refuse registration of the entire mark where it is determined that the entire mark is merely descriptive, deceptively misdescriptive, or primarily geographically descriptive of the goods.  Thus, the Office may require the disclaimer of a portion of a mark which, when used in connection with the goods or services, is merely descriptive, deceptively misdescriptive, primarily geographically descriptive, or otherwise unregistrable (e.g., generic).  TMEP §1213.03(a).  If an applicant does not comply with a disclaimer requirement, the Office may refuse registration of the entire mark.  TMEP §1213.01(b).  In this case, the unitary phrase EXCELLENCE IN PARTNER LOGISTICS immediately describes the field of use for the applicant’s goods and services, and also attributes to those goods and services a high level or quality or “excellence.”  Because this unitary phrase is laudatory, it is therefore nondistinctive and unregistrable without proof of acquired distinctiveness.  Exquisite Form Industries, Inc. v. Exquisite Fabrics of London, 378 F. Supp. 403, 183 USPQ 666 (S.D.N.Y. 1974) (EXQUISITE); In re Ervin, 1 USPQ2d 1665 (TTAB 1986) (THE ORIGINAL); In re Inter‑State Oil Co., 219 USPQ 1229 (TTAB 1983) (PREFERRED); In re Royal Viking Line A/S, 216 USPQ 795 (TTAB 1982) (WORLD CLASS); In re Wileswood, Inc., 201 USPQ 400 (TTAB 1978) (AMERICA'S BEST POPCORN! and AMERICA'S FAVORITE POPCORN!).

 

 

 

 

 

Conclusion

The applicant may telephone the examining attorney, instead of submitting a written response, to expedite the application.

 

 

 

 

 

 

 

 

 

/Nicholas K.D. Altree/

Trademark Attorney

Law Office 108

(703) 308-9108, ext. 132

Fax: (703) 746-8108

 

 

 

 

 

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 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