Offc Action Outgoing

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  76/455167

 

The assigned examining attorney has reviewed the referenced application and determined the following.

 

No Conflicting Marks Noted

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. Section 1052(d).  TMEP section 704.01.

 

However, the examining attorney makes the following refusal.

 

Mark is Merely Descriptive

The examining attorney refuses registration on the Principal Register because the proposed mark merely describes the goods.  Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1); TMEP section 1209 et seq.

 

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.  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 applicant has applied to register the mark SATELLITE COMPASS for navigation system, namely, global positioning systems for use in cars and boats or ships; electrical communication apparatus/instruments; measuring apparatus/instruments; electronic machines/instruments.

 

As Applicant’s identifications demonstrates, Applicant’s goods consist, in part, of global positioning systems.  Global positioning systems typically involve the use of satellites.  See the enclosed dictionary evidence.  Thus, the word “SATELLITE” is descriptive because it identifies a characteristic and feature of Applicant’s goods.  Additionally, Applicant’s specimen demonstrates that the word “COMPASS” is also merely descriptive because the goods allow the user to determine geographic direction.  See the following dictionary definition as well as an excerpt from Applicant’s website that shows the function of the goods. 

 

com·pass (kùm¹pes, kòm¹-) noun

1.         a. A device used to determine geographic direction, usually consisting of a magnetic needle or needles horizontally mounted or suspended and free to pivot until aligned with the magnetic field of Earth. b. Another device, such as a radio compass or a gyrocompass, used for determining geographic direction.[1]

 

Accordingly, the examining attorney refuses registration on the Principal Register because the proposed mark is merely descriptive of a feature, characteristic, and nature of the identified goods.  Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1); TMEP section 1209 et seq

 

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 chooses to respond to the refusal to register, the applicant must also respond to the following informalities.

 

Identification of Goods

The identification of goods is unacceptable as indefinite.  Applicant must specify the common commercial name of the apparatus, instruments and machines, classify accordingly, and remit fees, as necessary.  Similarly, Applicant must specify the common commercial name of the components comprising the navigation system.  Also, when revising the identification, Applicant should note that the use of backslashes ( / ) and parentheses ( ) are not acceptable for registration purposes.  The applicant may adopt the following identification, if accurate:  Global positioning system (GPS) consisting of computers, computer software, transmitters, receivers, and network interface devices for use in cars and boats or ships; electrical communication apparatus and instruments, namely, [specify common commercial name or describe the goods with particularity]; measuring apparatus and instruments, namely, [specify common commercial name or describe the goods with particularity]; electronic machines and instruments, namely, [specify common commercial name or describe the goods with particularity], in Class 9.

 

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 that are not within the scope of goods set forth in the present identification.

 

Significance

The applicant must indicate whether the wording “SATELLITE COMPASS” “SATELLITE,” or “COMPASS” has any significance in the relevant trade or industry or as applied to the goods/services.  37 C.F.R. §2.61(b).

 

Requirement for Information

The examining attorney requires information about the goods to determine whether all or part of the mark is merely descriptive as applied to the goods.  TMEP sec. 814.  The applicant must provide product information for the goods.  This may take the form of a fact sheet, instruction manual, or advertisement.  If unavailable, the applicant should submit the information for goods of the same type, explaining how its own product will differ.  If the goods feature new technology and no competing goods are available, the applicant must provide a detailed factual description of the goods.

 

In all cases, the submitted factual information must make clear how the goods operate, its salient features, and its prospective customer and/or channel of trade.  This information is not readily available to the examining attorney, and is pertinent to the descriptiveness determination.  Conclusory statements from the applicant or its attorney regarding the descriptiveness standard will not be sufficient to meet this requirement for information.

 

Trademark Rule 2.61(b) states "The examiner may require the applicant to furnish such information and exhibits as may be reasonably necessary to the proper examination of the application".  The Trademark Trial and Appeal Board has upheld a refusal of registration based on the applicant's failure to provide information requested under this rule.  In re Babies Beat Inc., 13 USPQ2d 1729 (TTAB 1990)(failure to submit patent information regarding configuration). 

 

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

 

/Caroline Fong Weimer/

Examining Attorney

Law Office 115

(703) 893-1636 ext. 411

(703) 746-6179 (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.

 

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.