UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/454986
APPLICANT: Scitex Digital Printing, Inc.
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CORRESPONDENT ADDRESS: BARBARA JOAN HAUSHALTER LAW OFFICE OF B JOAN HAUSHALTER 228 BENT PINES CT BELLEFONTAINE OH 43311-9270
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3513 ecom113@uspto.gov
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MARK: MODULAR PRINTING SYSTEM
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CORRESPONDENT’S REFERENCE/DOCKET NO: SDPO11 TA
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 76/454986
The assigned examining attorney has reviewed the referenced application and determined the following.
• Search of Office records.
The examining attorney has searched the Office records and has found no similar registered or pending mark that would bar registration under Trademark Act §2(d), 15 U.S.C. §1052(d). TMEP §704.02.
1. Descriptiveness refusal.
The examining attorney refuses registration on the Principal Register because the proposed mark merely describes the goods/services. Trademark Act §2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §§1209 et seq.
A mark is merely descriptive under Trademark Act §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/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).
In the instant case, the applicant seeks to register the mark modular printing system for certain computer printers.
The examining attorney’s research in the Lexis®/Nexis® database produced ample evidence (some of which is attached hereto) that “modular printing systems” is a commonplace term in the applicant’s field and therefore is (at the very least) merely descriptive of the goods that the applicant provides. One research source included the following:
… [Research Inc.] said that market demand for its reflow ovens––such as the DeltaFlo™, MicriFlo™ and ThermaFlo™ lines––remained strong in the fourth quarter, after intensifying earlier in the year. These ovens allow electronic manufacturing services (EMS) companies, as well as original equipment manufacturers (OEMs), to build circuit boards for PCs, cellular phones and other electronic devices using surface mount technology (SMT). The Company indicated that sales of modular printing systems (MPS) for digital ink-jet printing were down in the fourth quarter compared to the same quarter last year. Research Inc.'s strategic partner in ink-jet printing systems was building inventory of the MPS systems during last year's fourth quarter for their introduction of the product in calendar year 2000, and is currently transitioning the MPS system to provide full-process color technology. …
See Research, Inc. Reports Record Sales for Fourth Quarter and Year; Net Income Up 191 Percent for the Year, PR Newswire (November 2, 2000).
Another research source included the following:
… Now, wide-format plotters are so ubiquitous that printer companies are creating other printing systems for engineers to address other needs for which a standard wide-format plotter may not necessarily be best-suited. More than a plotter multifunction, modular printing systems are plotters which may be accompanied by a scanner, document folder, or other items. With these capabilities, multifunction printing systems are designed as a central print room device for an entire engineering firm. …
See Michael Mendoza, Engineering Printers: More Than Plotting, Computer-aided Engineering (October 1998).
Even the applicant’s specimen, which reads VersaMark™ Modular Printing System, suggests that its purported “trademark” is actually a universally-used term for identifying the goods. (See also attached printout of Reg. No. 2308241, disclaiming “MODULAR POWER SYSTEMS” in Class 9.)
The applicant’s goods concern modular printing systems, so the wording MODULAR PRINTING SYSTEMS is (again, at the very least) merely descriptive rather than source-indicating in nature.
Accordingly, registration is refused under Trademark Act §2(e)(1). Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
If the applicant responds to the refusal to register, the applicant must also respond to the following.
2. Request for information.
In order to allow for proper examination of this application, including the final determination as to whether the mark is merely descriptive (or deceptively misdescriptive) in relation to the applicant’s goods or services, the applicant must submit (English) samples of advertisements or promotional materials for the goods or services or, if unavailable, for goods or services of the same type. If such materials are not available, the applicant must describe the nature, purpose, and channels of trade of the goods or services identified in the application.
In addition, the applicant must answer the following question(s) for the record:
Are the applicant’s goods based on a module or modulus?
Are the applicant’s goods designed with standardized units or dimensions, as for easy assembly and repair or flexible arrangement and use?
Does the wording “modular printing system” have any significance in the applicant’s industry or as applied to the applicant’s goods?
37 C.F.R. §2.61(b).
3. Specimen.
Invoices, announcements, order forms, bills of lading, leaflets, brochures, publicity releases, and other printed advertising material generally are not acceptable specimens for goods. In re Bright of America, Inc., 205 USPQ 63 (TTAB 1979); TMEP §§905.05 and 905.07. See In re Ultraflight Inc., 221 USPQ 903 (TTAB 1984).
The submitted material (a “[b]rochure showing configuration for the goods”) is unacceptable as evidence of actual use because it fails to show use of the mark on the applicant’s goods. The applicant must submit a specimen showing the mark, as used in commerce, on the actual goods. 37 C.F.R. §2.56. Examples of acceptable specimens for goods are tags, labels, instruction manuals, containers, or photographs that show the mark on the goods or packaging. TMEP §904.04 et seq. Pending an adequate response to the above, the examining attorney refuses registration under Trademark Act §§1, 2, and 45, 15 U.S.C. §§1051, 1052, and 1127, because the record does not show use of the proposed mark as a trademark. TMEP §§904.11 and 1301.02 et seq. The examining attorney will reconsider this refusal if the applicant submits a specimen showing use of the mark on the goods.
The applicant must also verify, with a declaration* under 37 C.F.R. §2.20 or affidavit, that the substitute specimen(s) was/were in use in commerce at least as early as the filing date of the application. Jim Dandy Co. v. Siler City Mills, Inc., 209 USPQ 764 (TTAB 1981); 37 C.F.R. §2.59(a); TMEP §904.09.
If an amendment of the dates‑of‑use clause is necessary in order to state the correct dates of first use, the applicant must verify the amendment with a declaration* under 37 C.F.R. §2.20 or affidavit. 37 C.F.R. §2.71(c); TMEP §§903.05 and 1104.09(d).
• Responding to this Office Action.
To respond formally using the Office’s online Trademark Electronic Application System (TEAS), the applicant should use the “Form Wizard” at http://eteas.gov.uspto.report/V2.0/oa200/WIZARD.htm.
To respond formally via regular mail, the applicant should mail, to the Return Address listed above, correspondence bearing the serial number, law office, and examining attorney’s name on the upper right corner of each page.
To check the status of an application at any time, the applicant is strongly encouraged to visit the Office’s online Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov. For general and other useful information about trademarks, the applicant may visit the Office’s official Web site at http://www.gov.uspto.report/main/trademarks.htm. For inquiries or questions about this Office Action, the applicant should contact the assigned Examining Attorney.
Notice of Fee Increase: Effective January 1, 2003, the fee for filing an application for trademark registration will be increased $10.00 to $335.00 per International Class. The USPTO will not accord a filing date to applications 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 for classes added on or after January 1, 2003.
/J. Brendan Regan/
Examining Attorney, Law Office 113
(703) 308-9113x120 • brendan.regan@uspto.gov
APPENDIX TO OFFICE ACTION:
evidence of mere descriptiveness
PR Newswire November 2, 2000, Thursday
Copyright 2000 PR Newswire Association, Inc.
PR Newswire
November 2, 2000, Thursday
SECTION: FINANCIAL NEWS
DISTRIBUTION: TO BUSINESS EDITOR
LENGTH: 1369 words
HEADLINE: Research, Inc. Reports Record Sales for Fourth Quarter and Year; Net Income Up 191 Percent
for the Year;
Conference Call to be Held at 2:30 p.m. CST Today
DATELINE: EDEN PRAIRIE, Minn., Nov. 2
BODY:
... EMS) companies, as well as original equipment manufacturers (OEMs), to build circuit boards for PCs,
cellular phones and other electronic devices using surface mount technology (SMT). The Company
indicated that sales of modular printing systems (MPS) for digital ink-jet printing were down in the
fourth quarter compared to the same quarter last year. Research Inc.'s strategic partner in ink-jet
printing systems was ...
Source:
News & Business > / . . . / > News Group File, All
Terms:
"modular printing system" (Edit Search)
View:
KWIC ± 25
Date/Time:
Monday, February 24, 2003 - 6:23 PM EST
Computer-aided Engineering October 1998
Copyright 1998 UMI, Inc.; ABI/INFORM
Copyright Penton Publishing 1998
Computer-aided Engineering
October 1998
SECTION: Vol. 17, No. 10 Pg. 50-54; ISSN: 0733-3536; CODEN: CCAEDJ
LENGTH: 861 words
HEADLINE: Engineering printers: More than plotting
BYLINE: Mendoza, Michael
BODY:
... companies are creating other printing systems for engineers to address other needs for which a
standard wide-format plotter may not necessarily be best-suited. More Than a Plotter Multifunction,
modular printing systems are plotters which may be accompanied by a scanner, document folder, or
other items. With these capabilities, multifunction printing systems are designed as a central print room
device for an entire engineering firm. The ...
Source:
News & Business > / . . . / > News Group File, All
Terms:
"modular printing system" (Edit Search)
View:
KWIC ± 25
Date/Time:
Monday, February 24, 2003 - 6:35 PM EST
* The following is a properly worded declaration under 37 C.F.R. §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.” The applicant should, at the end of its response, insert the foregoing declaration signed and dated by a person authorized to sign under 37 C.F.R. §2.33(a).