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  76/428015

 

This letter responds to the applicant's electronic communication filed on June 10, 2003. 

 

The applicant must submit a separate response for each application to avoid misfiling and abandonment of applications.

 

The examining attorney has reviewed the applicant’s response and has determined that the following issues are outstanding and thus continued.

 

Material Alteration

 

For this application, the applicant cannot change the mark to a different mark.  If the applicant seeks a different mark, then the applicant must submit a new application.

 

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).

Mark is Merely Descriptive

 

The examining attorney refuses registration on the Principal Register because the proposed mark merely describes the goods.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §§1209 et seq. 

 

A mark is merely descriptive under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1), if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant goods/services.  In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987);  In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re MetPath Inc., 223 USPQ 88 (TTAB 1984); In re Bright‑Crest, Ltd., 204 USPQ 591 (TTAB 1979); TMEP §1209.01(b).

 

Applicant proposes the mark GERM WIPES for use in connection with “Chemical formulation sold as an integral component of anti-microbial, anti-viral, anti-bacterial and anti-fungal products for use on human skin, namely disinfectant soaps, anti-bacterial soaps, liquid soaps for hands, face and body, medicated soaps, hand sanitizers, anti-fungal foot creams and sprays” and “Chemical formulation sold as an integral component of anti-microbial, anti-viral, anti-bacterial and anti-fungal products for use on human skin, namely, all purpose disinfectants, disinfecting hand wash, anti-microbial hand wash, anti-microbial skin sanitizer gel and liquid spray, anti-bacterial hand wash, anti-fungal foot creams and sprays, anti-bacterial pharmaceuticals, sanitizers for hospital use, household use, use in institutional and industrial areas.”

 

The examining attorney finds that the mark is primarily merely descriptive of the applicant’s goods.  That is the mark GERM WIPES describes the goods, wipes and the organisms that the wipes are intended to remove.

 

It is not necessary that a term describe all of the purposes, functions, characteristics or features of a product in order to be considered merely descriptive; it is enough if the term describes one significant function, attribute or property.  In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973).  See In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987) (APPLE PIE held merely descriptive of potpourri); In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986) (BED & BREAKFAST REGISTRY held merely descriptive of lodging reservations services); In re MetPath Inc., 223 USPQ 88 (TTAB 1984) (MALE-P.A.P. TEST held merely descriptive of clinical pathological immunoassay testing services for detecting and monitoring prostatic cancer); In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979) (COASTER-CARDS held merely descriptive of a coaster suitable for direct mailing).  TMEP section 1209.01(b).

 

A term is suggestive if some imagination, thought or perception is required to determine the nature of the goods from the terms.  A suggestive term differs from a descriptive term, which immediately tells something about the goods.  In re Aid Laboratories, Inc., 223 USPQ 357 (TTAB 1984).  A suggestive mark is registrable on the Principal Register.  TMEP section 1209.01(a).  The mark is not suggestive because it tells the consumer that the goods are wipes and that they clean germs.

 

Therefore the examining attorney finds that the mark is descriptive and refuses registration under the Trademark Act  §2(e)(1), 15 U.S.C. 1052(e)(1).

 

Advisory: Supplemental Register Unavailable at this time

 

Please note that the mark in an application under Trademark Act Section 1(b), 15 U.S.C. §1051(b), is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use under 37 C.F.R. §2.76 or statement of use under 37 C.F.R. §2.88 has been timely filed.  37 C.F.R. §2.47(c); TMEP §815.02, 816.02 and 1102.03.  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. §2.75(b); TMEP §§206.01 and 816.02.  This is not an offer of the Supplemental Register contingent upon an amendment to allege use.  It is merely an advisory that such an amendment is not even an option until an amendment to allege use is filed.

 

 

Disclaimer  of Generic Matter

 

If the applicant seeks registration on the Supplemental Register upon submission of an Allegation of Use, the applicant must enter the following disclaimer.

 

The applicant must disclaim the generic wording "WIPES" apart from the mark as shown. Trademark Act Section 6, 15 U.S.C. Section 1056; TMEP sections 1213 and 1213.02(a).  The wording is merely descriptive of the purpose of the goods.

 

The applicant must insert the required disclaimer even if registration of the mark is sought on the Supplemental Register or on the Principal Register under Section 2(f), because generic matter must be disclaimed on either register.  In re Wella Corp., 565 F.2d 143, 196 USPQ 7 (CCPA 1977); In re Creative Goldsmiths of Washington, Inc., 229 USPQ 766 (TTAB 1986); In re Carolyn's Candies, Inc., 206 USPQ 356 (TTAB 1980); TMEP section 1213.02(b).

 

The computerized printing format for the Trademark Official Gazette requires a standard form for a disclaimer.   TMEP section 1213.09(a)(i).  A properly worded disclaimer should read as follows:

 

            No claim is made to the exclusive right to use “WIPES” apart from the mark as shown.

 

See In re Owatonna Tool Co., 231 USPQ 493 (Comm'r Pats. 1983).

 

Clarification of Goods

 

The identification of goods must be clarified.  The applicant must re-state the identification of goods as amended.  If the applicant chooses to delete a class of goods,  then the applicant must clearly state the classification of goods to be deleted.    “Chemical formulation sold as an integral component of anti-microbial, anti-viral, anti-bacterial and anti-fungal products for use on human skin” are descriptive of goods for International Class 5.  Thus language should not lead into a description for goods that belong in International Class 3.  Moreover, “hand sanitizers, anti-fungal foot creams and sprays” belong in class 5.  The applicant may adopt the following identification, if accurate:  TMEP §1402.01.

 

Hygienic skin care products,  namely, disinfectant soaps, anti-bacterial soaps, liquid soaps for hands, body and face, medicated soaps.  International Class 3.

 

Chemical formulation sold as an integral component of anti-microbial, anti-viral, anti-bacterial and anti-fungal products for use on human skin, namely, all purpose disinfectants, disinfecting hand wash, anti-microbial hand wash, anti-microbial skin sanitizer gel and liquid spray, anti-bacterial hand wash, anti-fungal foot creams and sprays, anti-bacterial pharmaceuticals, sanitizers for hospital use, sanitizers for household use, and sanitizers for use in institutional and industrial areas.  International Class 5.

 

 

 

 

 

D. Beryl Gardner

Examining Attorney-Law Office 112

ecom112@uspto.gov (formal response only)

beryl.gardner@uspto.gov (questions only)

703-308-9112    x180

410-997-6378

 

 

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.