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  76/436643

 

This letter responds to the applicant’s communication filed on February 3, 2003.

 

The applicant has amended the identification of goods.  The amended identification is acceptable.

 

The applicant seeks to register IRON CORE for “weight lifting equipment, namely, weight lifting machines.”  Registration was refused under Section 2(e)(1) of the Trademark Act on the grounds that the proposed mark is merely descriptive of the goods.  The applicant has responded that “iron core” is “suggestive of strength, power, durability and the like, all of which have positive connotations to weight lifters.” 

 

However, the Section 2(e)(1) refusal cannot be withdrawn until the examining attorney is satisfied that the applicant’s weight lifting machines, or parts thereof, do not have an “iron core,” that is, a center core  (defined as “the center or innermost part”) made of iron.  As noted in Office Action No. 01, “if the applicant’s weight lifting equipment has an “iron core,” the applicant’s mark merely describes this feature of the goods.

 

The applicant must state for the record whether the applicant’s weight lifting machines, or parts thereof, have an “iron core,” that is, a center core (defined as “the center or innermost part”) made of iron.  37 C.F.R. Section 2.61(b).  

 

The applicant must also state for the record whether the applicant’s weight lifting machines or parts thereof are made of iron.  37 C.F.R. Section 2.61(b).  If so, and the proposed mark is ultimately determined not to be merely descriptive, the applicant must insert a disclaimer of IRON in the application.  Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.08(a)(i).

 

A properly worded disclaimer should read as follows:

 

No claim is made to the exclusive right to use IRON apart from the mark as shown.

 

Further action awaits the applicant’s response.

 

 

 

 

Steven Fine

Examining Attorney

Law Office 110

(703) 308-9110 ext. 124

ecom110@uspto.gov

 

 

 

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.