UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/454494
APPLICANT: Deskey Associates, Inc.
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CORRESPONDENT ADDRESS: TODD WENGROVSKY LAW OFFICES OF TODD WENGROVSKY, PLLC 285 SOUTHFIELD ROAD, BOX 585 CALVERTON, NEW YORK I 1933
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3513 ecom108@uspto.gov
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MARK: ENERGY APPLIED TO IDEAS
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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 76/454494
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 may adopt the following recitation, if accurate: advertising and business services, namely, creating, developing and implementing business ideas and concepts for others. TMEP §1402.11.
The applicant must rewrite the recitation of services in its entirety because of the nature and extent of the amendment. 37 C.F.R. §2.74(b).
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. §2.71(a); TMEP §1402.06. Therefore, the applicant may not amend to include any services that are not within the scope of the services recited in the present identification.
The nature of the service is not clear from the present record. In order to allow proper identification and classification of the services on which the applicant intends to use the mark, the applicant must submit samples of advertisements or promotional materials for services of the same type. If such materials are not available, the applicant must describe the nature, purpose and channels of trade of the services with which the applicant has asserted a bona fide intent to use the mark. 37 C.F.R. §2.61(b); TMEP §§814 and 1402.01(d).
The applicant must disclaim the descriptive wording "IDEAS" apart from the mark as shown. Trademark Act Section 6, 15 U.S.C. Section 1056; TMEP sections 1213 and 1213.02(a). The wording is merely descriptive because it describes a feature of applicant’s services.
The computerized printing format for the Trademark Official Gazette requires a standard form for a disclaimer. TMEP section 1213.09(a)(i). A properly worded disclaimer should read as follows:
No claim is made to the exclusive right to use IDEAS apart from the mark as shown.
See In re Owatonna Tool Co., 231 USPQ 493 (Comm'r Pats. 1983).
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
/Amos T. Matthews/
Examining Attorney
Law Office 108
(703) 308-9108 ext. 293
(703) 746-8108 (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.