UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

FINAL 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  76/408676

 

This letter responds to the applicant's communication filed on November 3, 2003.

 

I.  Status

 

The applicant filed to register NYE, in typed form, for numerous goods.

 

In a second Office Action mailed on June 19, 2003, the examining attorney maintained a surname refusal under Section 2(e)(4) and maintained the requirement for an acceptable identification of goods.  The examining attorney also rejected a proposed amendment of the drawing because the amendment constituted a material alteration of the mark.

 

In response to the second Office action, the applicant has submitted additional arguments in support of registration.  The applicant also submitted a proposed amendment of the identification of goods.

 

The examining attorney has considered the applicant’s arguments and found them unpersuasive.  For the reason discussed below, the rejection of the proposed amendment of the drawing is continued and made FINAL.  In addition, the surname refusal under Section 2(e)(4) is continued and made FINAL, for the reasons discussed below.  The examining attorney must also make FINAL the requirement for an acceptable identification of goods, for the reasons discussed below.

 

II.  Reasoning for Final Action

 

Amended Drawing is Material Alteration of Goods

 

As discussed in the second Office action, the proposed amendment of the drawing is unacceptable because it would materially alter the character of the mark.  37 C.F.R. §2.72; TMEP §§807.14, 807.14(a) and 807.14(a)(i).  See In re Wine Society of America, Inc., 12 USPQ2d 1139 (TTAB 1989); In re Nationwide Industries Inc., 6 USPQ2d 1883 (TTAB 1988); In re Pierce Foods Corp., 230 USPQ 307 (TTAB 1986).  The impression of the original mark is that of a surname.  The impression of the proposed mark would be that of NY plus a “triple bar” design.

 

According to TMEP Section 807.14(a):

 

An amendment adding an element that the applicant has previously registered for the same goods or services may be permitted.  The rationale is that “[t]he addition of applicant’s well-known registered mark to the mark sought to be registered ... is not a material change which would require republication of the mark.”  Florasynth Laboratories Inc. v. Mülhens, 122 USPQ 284 (Comm’r Pats. 1959) (addition of applicant’s previously registered mark “4711” to the mark “ELAN” held not a material alteration).  However, the addition of matter that the applicant has previously registered for different goods or services is not permissible.  In re Hacot-Colombier, supra, 105 F.3d at 620, 41 USPQ2d at 1527; In re Nationwide Industries Inc., 6 USPQ2d 1882, 1886 (TTAB 1988).  An amendment adding previously registered matter is also unacceptable if it substantially alters the original mark.  In re John LaBatt Ltd., 26 USPQ2d 1077, 1078 (Comm’r Pats. 1992) (“Here, the applicant does not seek to merely add an element from one registration to another.  Rather, the applicant seeks to eliminate its original mark, and substitute another.  The exception to the material alteration rule clearly does not encompass cases where the original mark disappears.”). 

 

The applicant contends that the proposed amendment of the mark, NY plus the “triple bar” design, still reads as “NYE.”  The examining attorney must respectfully disagree.  Consumer’s encountering the proposed amendment of the mark would consider it as NY plus a design and not the term NYE, a common surname.  The originally filed mark and the proposed mark provide very different commercial impressions.  Consequently, the rejection of the proposed amendment must be continued and made FINAL.

 

Surname Refusal

 

The applicant has requested that the examining attorney withdraw the surname refusal.  The examining attorney, however, must deny that request. 

 

The evidence previously submitted indicate that there are over 5000 residential telephone listings for the surname NYE.  The substantial number of listing demonstrate that consumers are accustomed to the use of the term NYE as a surname and would most likely perceive the applicant’s mark as a surname.  For this reason, the surname refusal under Section 2(e)(4) is also continued and made FINAL.

 

Identification of Goods

 

The proposed amendment to the identification cannot be accepted because the wording "leather business card holder" refers to goods that are not within the scope of the identification that was set forth in the application at the time of filing.  While the identification of goods may be amended to clarify or limit the goods, additions to the identification or a broadening of the scope of the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §§1402.06 et seq. and 1402.07.  Therefore, this wording should be deleted from the identification.

 

The requirement for an acceptable identification is continued and made FINAL.

 

III.  Proper Response to a Final Action

 

Please note that the only appropriate responses to a final action are (1) compliance with the outstanding requirements, if feasible, (2) filing of an appeal to the Trademark Trial and Appeal Board, or (3) filing of a petition to the Director if permitted by 37 C.F.R. §2.63(b). 37 C.F.R. §2.64(a); TMEP §715.01.  Regarding petitions to the Director, see 37 C.F.R. §2.146 and TMEP Chapter 1700.  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.

 

 

 

 

 

/Rudy Singleton/

Examining Attorney, Law Office 102

(703) 308-9102 ext. 266

 

 

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.