UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/406740
APPLICANT: Total Repair Express, L.L.C
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CORRESPONDENT ADDRESS: CATHRYN A. MITCHELL, ESQ. MILLERMITCHELL PC 863 STATE ROAD PRINCETON, NJ 08540
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom113@uspto.gov
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MARK: TRE "REPAIR MANAGEMENT PEOPLE"
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS:
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Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 76/406740
This letter responds to the applicant’s March 7, 2003 communication with this Office. Following consideration of the submission, the examining attorney concludes as follows.
The applicant has made a Section 2(f) acquired distinctiveness claim as to “REPAIR MANAGEMENT” based on four years use. On its face, this is insufficient.
Section 2(f) of the Trademark Act, 15 U.S.C. §1052(f), provides that “proof of substantially exclusive and continuous use” of a designation “as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made” may be accepted as prima facie evidence that the mark has acquired distinctiveness as used with the applicant’s goods in commerce. See also 37 C.F.R. §2.41(b).
Furthermore, the term “repair management” is highly descriptive with regard to the content of the goods. Therefore, even if the applicant were to amass five years use, it is not clear that an allegation of five years’ use alone is sufficient evidence of distinctiveness.
Given the applicant’s failure to show the necessary term of usage, the applicant may submit actual evidence to prove the distinctiveness of the mark in commerce. The Office will decide each case on its own merits. The examining attorney will consider the following principal factors in this decision: (1) how long the applicant has used the mark; (2) the type and amount of advertising of the mark; and (3) the applicant’s efforts to associate the mark with the goods/services. See Ralston Purina Co. v. Thomas J. Lipton, Inc., 341 F. Supp. 129, 173 USPQ 820 (S.D.N.Y. 1972); In re Packaging Specialists, Inc., 221 USPQ 917 (TTAB 1984); 37 C.F.R. §2.41; TMEP §§1212, 1212.01 and 1212.06 et seq. This evidence may include specific dollar sales under the mark, advertising figures, samples of advertising, consumer or dealer statements of recognition of the mark and any other evidence that establishes the distinctiveness of the mark as an indicator of source.
Pending the submission of an acceptable 2(f) claim, the disclaimer requirement is maintained.
Please note, the amendment to the identification is acceptable and has been made of record.
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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.
John T. Lincoski /JTL/
Trademark Attorney
Law Office 113
(703)308-9113 ext. 286
John.Lincoski@USPTO.GOV