UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/449353
APPLICANT: Hunter, Max
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CORRESPONDENT ADDRESS: MAX HUNTER 18994 RIVERSIDE DR SONOMA CA 95476-4553
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3513 ecom107@uspto.gov
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MARK: WESTERNDOVETAIL.COM
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
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 76/449353
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:
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.
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.
An application based on use of the mark in commerce under Trademark Act Section 1(a), 15 U.S.C. §1051(a), must include a specimen showing use of the mark in commerce on or in connection with the goods/services. TMEP §904. The application does not contain a specimen. The applicant must submit a specimen, and must submit the following statement:
The specimen was in use in commerce at least as early as the filing date of the application.
This statement must be verified with an affidavit or a declaration under 37 C.F.R. §2.20. 37 C.F.R. §2.59(a); TMEP §904.09. 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)
The “TM” is not part of the mark, and the applicant should delete this from the drawing. TMEP §§807.04 and 807.15.
Additionally, the background is yellow because the mark appears on yellow paper. A drawing must be in black and white. Therefore, the applicant must submit a new drawing showing the mark clearly and conforming to 37 C.F.R. §2.52.
The requirements for a special‑form drawing are as follows:
(1) The drawing must appear in black and white; no color is permitted (therefore no color paper is permitted).
(2) Every line and letter must be black and clear.
(3) The use of gray to indicate shading is unacceptable.
(4) The lining must not be too fine or too close together.
(5) The preferred size of the area in which the mark is displayed is 2½ inches (6.1 cm.) high and 2½ inches (6.1 cm.) wide. It should not be larger than 4 inches (10.3 cm.) high or 4 inches (10.3 cm.) wide.
(6) If the reduction of the mark to the required size renders any details illegible, the applicant may insert a statement in the application to describe the mark and these details.
37 C.F.R. §2.52; TMEP §§807.01(b) and 807.07(a). The Office will enforce these drawing requirements strictly.
Because “dovetail” and “.com” are descriptive of the services, 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] Dot COM is a generic top level domain name.
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).
A properly worded disclaimer should read as follows:
No claim is made to the exclusive right to use “DOVETAIL.COM” apart from the mark as shown.
An application based on use of the mark in commerce under Trademark Act Section 1(a), 15 U.S.C. §1051(a) must include a date of first use of the applied-for mark in commerce. The application does not state this date.
The applicant lists two dates of first use in commerce of other marks, but does not provide the date of first use in commerce for mark as it appears on the drawing page.
The applicant must provide a statement specifying the date of first use of the mark (as it appears on the drawing page) in commerce. Trademark Act Section 1(a)(2), 15 U.S.C. §1051(a)(2); 37 C.F.R. §2.34(a)(1)(iii); TMEP §§903 and 903.02.
The applicant must verify this statement with an affidavit or a declaration under 37 C.F.R. §2.20. 37 C.F.R. §2.71(c). TMEP §903.05.
If the applicant has not used the applied-for mark in commerce, he may amend the application to assert a different basis for filing the application and submitting the requirements for the new basis. TMEP §§806.03 et seq.
In this case, the applicant may wish to amend the application to assert a §1(b) basis. To base the application on a bona fide intention to use the mark in commerce, the applicant must submit the following statement:
The applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application since the filing date of the application.
This statement must be verified, i.e., supported either by an affidavit or by a declaration under 37 C.F.R. §§2.20 and 2.33. Trademark Act Section 1(b), 15 U.S.C. §1051(b); 37 C.F.R. §2.34(a)(2)(i); TMEP §806.01(b).
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
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
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)
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.
[1]The American Heritage® Dictionary of the English Language, Third Edition copyright © 1992 by Houghton Mifflin Company. Electronic version licensed from INSO Corporation; further reproduction and distribution restricted in accordance with the Copyright Law of the United States. All rights reserved.