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  76/452386

 

This letter responds to applicant’s communication filed on November 26, 2003.

 

Disclaimer

The disclaimer of “engine” has been entered.

 

Specimen

The specimens are acceptable.

 

Recitation of services

The amended recitation of services is acceptable.

 

Mark is merely descriptive

THIS REFUSAL APPLIES TO CLASS(ES) <specify> ONLY

 

Registration was refused under Trademark Act Section 2(e)(1), 15 U.S.C. §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.

 

The proposed mark is ENGINE EXPRESS for delivery of engine and vehicular parts.  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 and/or services.  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).  A mark that describes an intended user of a product or service is also merely descriptive within the meaning of Section 2(e)(1).  Hunter Publishing Co. v. Caulfield Publishing Ltd., 1 USPQ2d 1996 (TTAB 1986); In re Camel Mfg. Co., Inc., 222 USPQ 1031 (TTAB 1984); In re Gentex Corp., 151 USPQ 435 (TTAB 1966).

 

“Engine” clearly describes the goods which are being delivered.  “Express” is defined as “By express delivery or transport[1].”  Enclosed, please find additional dictionary definitions which show the meaning of “express” with regard to delivery services.[2]  When combined, the mark clearly conveys the nature of the services – the express delivery of engines and engine parts.  In other words, the applicant’s services include “engine express delivery services.

 

The applicant has identified, but not submitted, several third party registrations which include the term “express.”  Third‑party registrations are not conclusive on the question of descriptiveness.  Each case must be considered on its own merits.  A proposed mark that is merely descriptive does not become registrable simply because other similar marks appear on the register.  In re Scholastic Testing Service, Inc., 196 USPQ 517 (TTAB 1977); TMEP §1209.03(a).  Furthermore, the register contains a significant number of registrations for delivery services in which “express” is disclaimed as descriptive.  Enclosed, please find a sampling of these registrations.

 

Because ENGINE EXPRESS is merely descriptive of the delivery services in International Class 39, the refusal to register under Trademark Act Section 2(e)(1) is maintained and made FINAL.

 

Dates of use

The applicant was required to identify the classes to which the dates of use in the Amendment to Allege Use pertained.  Because the applicant did not identify the classes to which the dates pertained, the refusal to register is maintained and made FINAL.

 

Options for responding

Applicant may respond to this final action by either:  (1) submitting a timely response that fully satisfies any outstanding requirements, if feasible; (2) timely filing an appeal of this final action to the Trademark Trial and Appeal Board; or (3) timely filing a petition to the Director if permitted by 37 C.F.R. §2.63(b).  37 C.F.R. §2.64(a); TMEP §715.01.  Regarding petitions to the Director, See 37 C.F.R. §2.146 and TMEP Chapter 1700.

 

If applicant fails to respond within six months of the mailing date of this final action, then the class to which the final refusal(s) and/or requirement(s) apply will be deleted from the application.  The application will proceed forward for the remaining classes only.  37 C.F.R. §2.65(a).

 

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

 

 

/Eugenia K. Martin/

Eugenia K. Martin

Examining Attorney

Law Office 114

(703) 308-9114 x122

(703) 746-8114 (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 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.