UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/454497
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 11933
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3513 ecom108@uspto.gov
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MARK: BRAND PLAN
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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 76/454497
The assigned examining attorney has reviewed the referenced application and determined the following.
REFUSAL TO REGISTER UNDER TRADEMARK ACT SECTION 2(e)(1)
The examining attorney refuses registration on the Principal Register because the proposed mark merely describes the services. Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1); TMEP section 1209 et seq.
The examining attorney must consider whether a mark is merely descriptive in relation to the identified services, not in the abstract. In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978); In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985).
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 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 section 1209.01(b).
The proposed mark describes a feature of applicant’s services. The dictionary definitions[1] indicate that the services of business marketing and seminars will provide consumers with a scheme, program or method which to choose a trademark or distinctive name which to identify its products or services.
If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informalities.
The wording “International Classification number 035- Advertising and Business Services, namely business marketing and consulting services ” in the recitation of services is unacceptable as indefinite. The applicant may amend this wording to “business marketing consulting services,” in International Class 35 if accurate. TMEP §1402.11.
The wording “conducting seminars in the field of marketing and branding” in the recitation of services is unacceptable as indefinite. The applicant may amend this wording to “educational services, namely, conducting seminars in the field of marketing and branding,” in International Class 41 if accurate. TMEP §1402.11.
The applicant must rewrite the identification of goods 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 goods or services that are not within the scope of the goods and services recited in the present identification.
If the applicant prosecutes this application as a combined, or multiple‑class, application, the applicant must comply with each of the following.
(1) The applicant must list the services by international class with the classes listed in ascending numerical order. TMEP §1403.01.
(2) The applicant must submit a filing fee for each international class of services not covered by the fee already paid. 37 C.F.R. §§2.6(a)(1) and 2.86(a); TMEP §§810.01 and 1403.01. Effective January 1, 2003, the fee for filing a trademark application is $335 for each class. This applies to classes added to pending applications as well as to new applications filed on or after that date.
/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.
[1] The American Heritage® Dictionary of the English Language, Third Edition copyright© 1992 by Houghton Mifflin Company.
brand (brànd) noun
1. a. A trademark or distinctive name identifying a product or a manufacturer. b. A product line so identified: a popular brand of soap. c. A distinctive category; a particular kind: a brand of comedy that I do not care for.
plan (plàn) noun
1. A scheme, program, or method worked out beforehand for the accomplishment of an objective: a plan of attack.
2. A proposed or tentative project or course of action: had no plans for the evening.