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

 

This letter responds to the applicant’s communication filed on August 12, 2003.  The applicant (1) argued against the refusal to register the mark under Section 2(e)(1) of the Trademark Act; (2) provided an amended recitation of services and (3) added a class.  While No. 2 is accepted, the applicant did not provide payment for the second class of services.  Therefore, the following is advised

 

The Mark Is Merely Descriptive – Final Refusal

Registration was refused under Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1), because the subject matter for which registration is sought is merely descriptive of the identified services.

 

The examining attorney has considered the applicant's arguments carefully but has found them unpersuasive.  For the reasons below, the refusal under Section 2(e)(1) is maintained and made FINAL.

 

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.”  As noted in the initial office action, 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.  The term GLOBAL CONTENT is commonly used to refer to the standardization of different electronic documents and data. 

The applicant argues that  the term “global” may refer to things other than system –wide functionality, and that this combination of descriptive terms does not does not preclude the conclusion that mark is distinctive. The applicant argues  that a cognitive step is necessary for the customer to associate the mark with the function of the services. 

The examining attorney respectfully disagrees.  With respect to the term GLOBAL, the examining attorney must consider descriptiveness in relation to the relevant goods or services.  The fact that a term may have different meanings in another context is not controlling on the question of descriptiveness.  In re Bright‑Crest, Ltd., 204 USPQ 591 (TTAB 1979).  TMEP §1209.03(e).  Further, the descriptiveness of a term is not determined in a  vacuum,  but in relation to the services with which the term is being used, or is intended to be used. The question is not whether consumers, upon encountering the term GLOBALCONTENT in itself, would fully comprehend the nature of the document management services with which it is intended to be used. Instead, the question is whether consumers, upon seeing GLOBALCONTENT being used in connection with document repository and management services, would immediately comprehend the informational significance of the term. In this case, no thought or imagination is necessary to make this correlation.  See In re American Greetings Corp., 226 USPQ 365 (TTAB 1985).  The term GLOBAL CONTENT is commonly used to describe a feature of document repository and management services offered by companies in the applicant's industry.   See the attached evidence showing use of the term GLOBAL CONTENT to describe a systemwide standardization and conversion process which places information contains in different formats into a single database

 

The applicant has not shown that the mark is anything but merely descriptive of a salient feature of the services --  the mark merely describes a feature of document management and repository services.  There is no unique or incongruous meaning created.  Further, because use of the term is so common in the industry, the applicant should not be granted exclusive rights to that term, thereby depriving others of the right to use the term.  See TMEP section 1209.  Therefore, the refusal to register the mark under Section 2(e)(1) is continued and made FINAL.

 

Additional Class

The applicant added an additional class of services to the application but did not pay the required fee.  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). 

 

This requirement is continued and made FINAL

 

Please note that the only appropriate responses to a final action are either (1) compliance with the outstanding requirements, if feasible, or (2) filing of an appeal to the Trademark Trial and Appeal Board.  37 C.F.R. §2.64(a).  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).

 

 

 

/Brian Neville/

Trademark 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.