UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/437506
APPLICANT: ERA POWER COMPANY
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CORRESPONDENT ADDRESS: EZRA SUTTON EZRA SUTTON, P.A. PLAZA 9 900 ROUTE 9, SUITE 201 WOODBRIDGE, NEW JERSEY 07095 |
RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3513 ecom104@uspto.gov
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MARK: POWER PARK
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CORRESPONDENT’S REFERENCE/DOCKET NO: ERA 10.1-002
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 76/437506
The assigned examining attorney has reviewed the referenced application and determined the following.
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 1105.01.
However, several concerns remain to be addressed.
The applicant has identified its goods as “vehicles having a power generation system for supplying power to a vehicle and to off-board power uses or loads.”
This identification is unacceptable because the nature of the “vehicles” is unclear. The applicant must amend its identification to clarify the nature of the vehicles with which the goods are used.
If accurate, the applicant may consider amending its identification to “vehicles, namely, automobiles, vans, trucks, boats, trains, and airplanes, having a power generation system for supplying power to a vehicle and to off-board power uses or loads.”
Amendment Guidelines
Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted. 37 C.F.R. Section 2.71(a); TMEP section 804.09. Therefore, the applicant may not amend to include any goods or services that are not within the scope of goods or service set forth in the present identification.
The Acceptable Identification of Goods and Services Manual sets out acceptable language for identifying goods and services of various types. The listing is by no means exhaustive but is intended to serve as a guide to examining attorneys in acting on applications and to the public in preparing applications.
Utilizing identification language from the Manual may enable trademark owners to avoid problems relating to indefiniteness with respect to the goods or services identified in their applications for registration; however, applicants should note that they must assert actual use in commerce or a bona fide intent to use the mark in commerce for the goods or services specified.
The Acceptable Identification of Goods and Services Manual may be purchased, along with other trademark information, in a CD-ROM format from the Office of Electronic Information Products Development of the Patent and Trademark Office ((703) 306-2600). See notice at 1190 TMOG 67 (Sept. 17, 1996). The applicant is advised that the Acceptable Identification of Goods and Services Manual is accessible via the USPTO homepage at the following address: http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.
Disclaimer Required
Trademark Act Section 6(a), 15 U.S.C. Section 1056(a), states that the Commissioner may require the applicant to disclaim an unregistrable component of a mark. Trademark Act Section 2(e), 15 U.S.C. Section 1052(e), bars the registration of a mark which is merely descriptive or deceptively misdescriptive, or primarily geographically descriptive of the goods or services. Therefore, the Commissioner may require the disclaimer of a portion of a mark which, when used in connection with the goods or services, is merely descriptive or deceptively misdescriptive, or primarily geographically descriptive. If an applicant does not comply with a disclaimer requirement, the examining attorney may refuse registration of the entire mark. TMEP section 1213.01(b).
A disclaimer does not remove the disclaimed matter from the mark. It is simply a statement that the applicant does not claim exclusive rights in the disclaimed wording or design apart from the mark as shown in the drawing.
The applicant must insert a disclaimer of “POWER” in the application because the term is descriptive with regard to the applicant’s goods. Trademark Act Section 6, 15 U.S.C. Section 1056; TMEP section 1213.
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 “POWER” apart from the mark as shown.
See In re Owatonna Tool Co., 231 USPQ 493 (Comm'r Pats. 1983).
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
Trademark Attorney
Law Office 104
(703)308-9104 ext. 261