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  76/446068

 

This letter responds to the Applicant’s communication filed April 8, 2003. 

 

The applicant (1) submitted a substitute specimen and supporting declaration, (2) amended the application to include a disclaimer of the term VIEWER, and (3) argued against the potential refusal to register the mark.  Item (2) is acceptable and has been entered into the record. 

 

Application Serial Nos. 76148766 and 76428003 are no longer potential bars to registration of the Applicant’s mark.

 

Upon further consideration, the examining attorney has reviewed the referenced application and the applicant’s response and determined the following.

Mark is Merely Descriptive

 

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

 

In this case, the applicant intends to use the mark “AXIAL VIEWER” on “x-ray diagnostic apparatus.”  The mark is descriptive because it immediately conveys to potential consumers the function of the applicant’s goods.

 

“AXIAL” is defined as “relating to, characterized by, or forming an axis.”[1] “VIEWER” is defined as “[o]ne that views, especially an onlooker or spectator…[a]ny of various optical devices used to facilitate the viewing of photographic transparencies by illuminating or magnifying them.”[2] 

 

Together the terms describe identify the function of the goods, namely, an x-ray apparatus that “allows and accurate axial view” x-ray.   The combination of the these terms is merely descriptive of the nature of the goods offered by the applicant and does not create a separate nondescriptive meaning beyond the dictionary meaning of the terms.  For this reason, registration is denied.

 

Amendment to the Supplemental Register

 

Although the examining attorney has refused registration on the Principal Register, upon submission of an acceptable specimen of use, the applicant may amend the application to seek registration on the Supplemental Register.  Trademark Act Section 23, 15 U.S.C. §1091; 37 C.F.R. §§2.47 and 2.75(a); TMEP §§801.02(b), 815 and 816 et seq.

 

Specimen 

 

The specimen is unacceptable as evidence of actual trademark use because it appears to be an advertising brochure.  Invoices, announcements, order forms, bills of lading, leaflets, brochures, publicity releases and other printed advertising material generally are not acceptable specimens.  In re Bright of America, Inc., 205 USPQ 63 (TTAB 1979); TMEP §§904.05 and 904.07.  See In re Ultraflight Inc., 221 USPQ 903 (TTAB 1984).  The applicant must submit a specimen showing the mark as it is used in commerce.  37 C.F.R. §2.56.  Examples of acceptable specimens are tags, labels, instruction manuals, containers, and photographs that show the mark on the goods or packaging.  TMEP §§904.04 et seq.  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); TMEP §904.09.

 

Response Guidelines

 

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

 

Current status and status date information is available, via push button telephone, for all federal trademark registration and application records maintained in the automated Trademark Reporting and Monitoring (TRAM) system.  The information may be accessed by calling (703) 305-8747 from 6:30 a.m. until midnight, Eastern Time, Monday through Friday, and entering a seven-digit registration number or eight-digit application number, followed by the “#” symbol, after the welcoming message and tone.  Callers may request information for up to five registration number or application number records per call.

 

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 for classes added on or after January 1, 2003.

 

 

/Toni Y. Hickey/

Trademark Examining Attorney

Law Office 115

(703) 308-9115 X134

 

 

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.