UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/451671
APPLICANT: Manna Pro Corporation
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CORRESPONDENT ADDRESS: ANDREW B. MAYFIELD ARMSTRONG TEASDALE LLP ONE METROPOLITAN SQUARE, SUITE 2600 ST. LOUIS, MISSOURI 63102-2740
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom111@uspto.gov
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MARK: SELECT SERIES
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CORRESPONDENT’S REFERENCE/DOCKET NO: 03409-00532
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 76/451671
This letter responds to the applicant’s communication filed on August 25, 2003. Please be advised that the refusal to register under Trademark Act Section 2(e)(1) is maintained and is made FINAL.
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 goods. 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 is made FINAL.
In this case, the applicant seeks registration of the wording SELECT SERIES for rabbit feed. However, the applicant asserts that registration is proper, as the proposed mark does not immediately convey a feature of the applicant’s goods. The applicant asserts that the proposed mark is not laudatory and relies upon the existence of prior registrations.
Again laudatory terms, those which attribute quality or excellence to the goods or services, are equivalent to other descriptive terms under Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1), and are nondistinctive and unregistrable without proof of acquired distinctiveness. Exquisite Form Industries, Inc. v. Exquisite Fabrics of London, 378 F. Supp. 403, 183 USPQ 666 (S.D.N.Y. 1974) (EXQUISITE); In re Ervin, 1 USPQ2d 1665 (TTAB 1986) (THE ORIGINAL); In re Inter‑State Oil Co., 219 USPQ 1229 (TTAB 1983) (PREFERRED); In re Royal Viking Line A/S, 216 USPQ 795 (TTAB 1982) (WORLD CLASS); In re Wileswood, Inc., 201 USPQ 400 (TTAB 1978) (AMERICA'S BEST POPCORN! and AMERICA'S FAVORITE POPCORN!). As such, proposed mark need not immediately describe an ingredient, quality, characteristic, function, feature, purpose or use of the relevant services.
Here, the proposed mark merely describes the laudatory term SELECT with the descriptive term SERIES. As the previously provided dictionary definition shows, the term SELECT attributes a quality of value and the term SERIES merely tells consumers that goods are part of a group of similar goods. Please see the previously provided dictionary definitions. A mark, which combines descriptive terms, as here, may be registrable where the composite creates a unitary mark with a separate, nondescriptive meaning. In re Sun Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001); In re Putman Publishing Co., 39 USPQ2d 2021 (TTAB 1996); In re Copytele Inc., 31 USPQ2d 1540 (TTAB 1994); In re Entenmann’s Inc., 15 USPQ2d 1750 (TTAB 1990), aff’d per curiam, 928 F.2d 411 (Fed. Cir. 1991); In re Serv-A-Portion Inc., 1 USPQ2d 1915 (TTAB 1986); In re Wells Fargo & Co., 231 USPQ 95 (TTAB 1986); In re Ampco Foods, Inc., 227 USPQ 331 (TTAB 1985). TMEP §1209.03(d). However, the description nature is clear from the record. The specimen of use further confirms the laudatory nature. The specimen quarantines consumer’s satisfaction and describes the goods as premium feed.
The applicant argues that registration is proper because of prior registration of the terms SELECT and SERIES. The applicant has provided copies of prior registrations to show that prior practice, as related to the SELECT element, should permit registration here. However, several of the registrations are for unrelated goods. Moreover, as the attached third-party registrations show, the consistent practice treats the wording as descriptive by either requiring disclaimer of the term, registrations on the Supplemental Register and/or claims of acquired distinctiveness. Please see the attached third-party registrations. Furthermore, it is noted that third‑party registrations are not conclusive on the question of descriptiveness. The examining attorney must consider each case on its own merits. A mark, which is merely descriptive, is not registrable merely because other similar marks appear on the register. In re Scholastic Testing Service, Inc., 196 USPQ 517 (TTAB 1977). TMEP §1209.03(a). Here, the plain meaning of the terms sufficiently establish the descriptive nature.
For the foregoing reasons, the refusal of registration pursuant to Trademark Act Section 2(e)(1),
15 U.S.C. Section 1052(e)(1), is believed proper and is 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).
/IngridCEulin/
Ingrid C. Eulin
Law Office 111
(703) 308-9111 ext 424
(703) 308-7191 fax
(703) 746-8111 alternate fax
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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.