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  76/443654

 

The assigned examining attorney has reviewed the referenced application and determined the following.

 

No Conflicting Marks

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.

 

The Mark Is Merely Descriptive

The examining attorney refuses registration on the Principal Register because the proposed mark merely describes the services.  Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1); TMEP section 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 good or service.  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 section 1209.01(b).

 

The applicant applied to register the mark GLOBALCONTENT for “ELECTRONIC DOCUMENT CONTENT MANAGEMENT SERVICES, NAMELY, ELECTRONIC DOCUMENT REPOSITORY, PROCESSING, SEARCHING AND ACCESSING SERVICES VIA AN ELECTRONIC COMMUNICATIONS NETWORK.”  The proposed mark merely describes something about the services, i.e. that they involve document global content management.  The term GLOBAL refers to system-wide functionality.  See attached.  The term GLOBAL CONTENT is commonly used to refer to the management of electronic documents and data.  See attached. 

 

It is not necessary that a term describe all of the purposes, functions, characteristics or features of the services to be merely descriptive.  It is enough if the term describes one attribute of the services.  In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973).

 

A mark which combines descriptive terms may be registrable if the composite creates a unitary mark with a separate, nondescriptive meaning.  In re Ampco Foods, Inc., 227 USPQ 331 (TTAB 1985).  However, in this case, applicant’s mark serves merely to describe something about the nature and scope of the applicant’s services.  Thus, the mark creates no separate nondescriptive meaning.   Accordingly, the mark is refused registration on the Principle Register under Section 2(e)(1).

 

Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.  If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informalities.

 

Classification of Services

The application identifies services that may be classified in several international classes since document repository (i.e. storage) services are in Class 39.  Therefore, the applicant must either:  (1) restrict the application to the number of class(es) covered by the fee already paid, or (2) pay the required fee for each additional class(es).  37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1401.04, 1401.04(b) and 1403.01. 

 

Effective January 1, 2003, the fee for filing a trademark application is $335 for each class.  This applies to classes added to pending applications as well as to new applications filed on or after that date.  37 C.F.R. §2.6(a)(1). 

 

The applicant may adopt the following recitation, if accurate: 

 

Class 35

ELECTRONIC DOCUMENT CONTENT MANAGEMENT SERVICES, NAMELY, ELECTRONIC DOCUMENT PROCESSING, SEARCHING AND ACCESSING SERVICES VIA AN ELECTRONIC COMMUNICATIONS NETWORK. 

 

Class 39

ELECTRONIC DOCUMENT SERVICES, NAMELY, PROVIDING AN ELECTRONIC DOCUMENT REPOSITORY

 

If the applicant prosecutes this application as a combined, or multiple‑class, application, the applicant must comply with each of the following.

 

(1)  The applicant must list the goods/services by international class with the classes listed in ascending numerical order.  TMEP §1403.01.

 

(2)  The applicant must submit a filing fee for each international class of goods/services not covered by the fee already paid.  37 C.F.R. §§2.6(a)(1) and 2.86(a); TMEP §§810.01 and 1403.01.  Effective January 1, 2003, the fee for filing a trademark application is $335 for each class.  This applies to classes added to pending applications as well as to new applications filed on or after that date.  

 

 

 

/Brian Neville/

Trademark Examining Attorney

Law Office 114

(703) 308-9114 ext.143

 

 

 

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.