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  76/445186

 

Authority Governing This Action

 

The following authorities govern the processing of trademark and service mark applications:  The Trademark Act, 15 U.S.C. Section 1051 et seq., the Trademark Rules of Practice, 37 C.F.R. Part 2, and the Trademark Manual of Examining Procedure (TMEP).  These and other trademark legal resources are available from the Office’s web site at http://www.gov.uspto.report/web/menu/tm.html.

 

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

 

No Similar 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. §1052(d).  TMEP §704.02.

 

Recitation of Services

 

The recitation of services is unacceptable as indefinite.  The applicant must amend the recitation to remove any ambiguity by clarifying the “manufacture custom or stock drawers” services.  TMEP §1402.11.

 

To custom manufacture goods is a class 40 service.  The applicant must amend the application to classify the services properly.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b).

 

However, to manufacture stock drawers may not be a service as contemplated by the act.  The manufacturing must be done to the order or specification of others.  Therefore, the examining attorney refuses registration because the activity of manufacturing stock drawers recited in the identification does not constitute services as contemplated by the Trademark Act.  Trademark Act Sections 1, 2, 3 and 45, 15 U.S.C. §§1051, 1052, 1053 and 1127; TMEP §§1301.01 et seq.  The following criteria have evolved for determining what constitutes a service, in connection with which a mark may be registered:  (1) a service must be a real activity; (2) a service must be performed to the order of, or for the benefit of, someone other than the applicant; and (3) a service cannot be merely an ancillary activity or one which is necessary to the applicant’s larger business.  In re Canadian Pacific Ltd., 754 F.2d 992, 224 USPQ 971 (Fed. Cir. 1985); In re Moore Business Forms, Inc., 24 USPQ2d 1638 (TTAB 1992); In re Betz Paperchem, Inc., 222 USPQ 89 (TTAB 1984); In re Integrated Resources, Inc., 218 USPQ 829 (TTAB 1983); In re Landmark Communications, Inc., 204 USPQ 692 (TTAB 1979).

 

The identification of services is indefinite because the applicant uses the wording “but not limited to….”  The recitation must be all‑inclusive.  37 C.F.R. §2.71(a); TMEP §§1402.03(a) and 1402.11.

 

If accurate, the applicant may use:

 

Custom manufacture of drawers, boxes, furniture, and component parts thereof, using wood, metal, or plastic; in class 40.

 

 

For your convenience, the Trademark Acceptable Identification of Goods and Services Manual is available on the Office’s web site at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.  The Manual includes explanations and notices of classification policy, and provides examples of acceptable identifications.

 

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 §§1402.06 and 1402.07 et seq.  Therefore, the applicant may not amend to include any goods or services that are not within the scope of the goods or services recited in the present identification.

 

Mark v. Specimen

 

The drawing displays the mark with the wording SOLID WOOD DRAWER BOXES 2188 EIGHTH STREET EAST SONOMA, CA 95476 below the box design.  However, this differs from the display of the mark on the specimen, where there is no wording below the box.  The applicant must either:

 

(1)  submit a new drawing of the mark that agrees with the specimen (without the extra wording); or

 

(2)  submit a substitute specimen that shows use of the mark shown in the drawing (with the extra wording). 

 

 

37 C.F.R. §2.51; TMEP §§807.14 and 807.14(a)(i).  The applicant may not amend the drawing if the amendment would materially alter the character of the mark.  37 C.F.R. §2.72(a); TMEP §807.14(a).

 

If a substitute specimen is submitted, the applicant must verify, with an affidavit or a declaration under 37 C.F.R. §2.20, that the substitute specimen was in use in commerce at least as early as the filing date of the application.  37 C.F.R. §§2.59(a) and 2.72(a); TMEP §904.09.

 

The statement supporting use of the substitute specimen must read as follows:

 

The substitute specimen was in use in commerce at least as early as the filing date of the application.

 

The following is a properly worded declaration under 37 C.F.R. Section 2.20.

 

The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that the facts set forth in this application are true; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.

   _______________________________

   (signature)

   ________________________________

   (print or type name)

   ________________________________

   (date)

 

 

If the applicant submits a substitute specimen (as opposed to submitting a new drawing without the informational wording), then the applicant must include all of the informational wording in the mark in the disclaimer required, below.

 

Disclaimer Required

 

Because “dovetail” is descriptive of the services and “incorporated” is a generic entity indicator, the applicant must insert a disclaimer in the application.  Trademark Act Section 6, 15 U.S.C. Section 1056; TMEP sections 1213 and 1213.03(a).  A visit to the applicant’s web site (www.drawer.com) indicates that the applicant “…produces high quality custom-made dovetail drawers….”

 

“Dovetail” means “1.            A fan-shaped tenon that forms a tight interlocking joint when fitted into a corresponding mortise.  2.            A joint formed by interlocking one or more such tenons and mortises. 

Verb  dove·tailed, dove·tail·ing, dove·tails verb, transitive 1. To cut into or join by means of  dovetails.[1]

 

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 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.  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).

 

If the applicant submits a new drawing conforming to the specimens of record, a properly worded disclaimer should read as follows:

 

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

 

 

However, if the applicant submits a specimen showing the mark on the current drawing page, a properly worded disclaimer should read as follows:

 

No claim is made to the exclusive right to use “DOVETAIL”, “INCORPORATED”, “SOLID WOOD DRAWER BOXES”, or “2188 EIGHTH STREET EAST SONOMA, CA 95476” apart from the mark as shown.

 

 

Telephone Calls

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

Fee Increase Effective January 1, 2003

Effective January 1, 2003, the fee for filing an application for trademark registration will be increased to $335.00 per International Class.  The USPTO will not accord a filing date to applications that are filed on or after that date that are not accompanied by a minimum of $335.00. 

 

Additionally, the fee for amending an existing application to add an additional class or classes of goods/services will be $335.00 per class.

 

A Final Rule amending the Rules of Practice in Trademark Cases to provide for this fee increase was published in the Federal Register on November 27, 2002 (67 Fed. Reg. 70,847 (2002)). http://a257.g.akamaitech.net/7/257/2422/14mar20010800/edocket.access.gpo.gov/2002/02-30086.htm.

 

 

 

 

 

/Robert H. Coggins/

Attorney-Advisor

Law Office 107

U.S. Patent and Trademark Office

 

ecom107@uspto.gov

703-308-9107 ext. 111

 

 

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 avoid lateness and possible abandonment due to mail delay, the applicant should use the following certificate of mailing language at the end of the response.  The applicant must retain a copy of the response with the signed certificate to offer as proof of mailing, if needed.  37 C.F.R. §1.8; TMEP § 702.03(a).

 

CERTIFICATE OF MAILING

 

I hereby certify that this correspondence is being deposited with the United States Postal Service with sufficient postage as first class mail in an envelope addressed to:  Assistant Commissioner for Trademarks, 2900 Crystal Drive, Arlington, Virginia 22202-3513, on _____________________.

                                                                                                                                    (Date)

______________________

(Signature)

______________________

(Typed or printed name)

 

 

 

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.