UNITED STATES PATENT AND TRADEMARK OFFICE
|
SERIAL NO: 76/460267
APPLICANT: SFERCO PTY. LIMITED
|
|
|
CORRESPONDENT ADDRESS: EDWIN D. SCHINDLER P.O. BOX 966 CORAM, NEW YORK 11727-0966
|
RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom115@uspto.gov
|
|
MARK: BARRIER
|
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS:
|
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.
|
Serial Number 76/460267
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 examining attorney refuses registration on the Principal Register because the proposed mark BARRIER merely describes the fencing goods. Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1); TMEP section 1209 et seq. Moreover, the proposed mark appears to be generic as applied to the fencing goods and, therefore, incapable of identifying the applicant’s fencing goods and distinguishing them from those of others. In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987); In re Pennzoil Products Co., 20 USPQ2d 1753 (TTAB 1991). Under these circumstances, the examining attorney cannot recommend an amendment to proceed under Trademark Act Section 2(f), 15 U.S.C. §1052(f), or an amendment to the Supplemental Register.
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 proposed mark is BARRIER for “fencing elements and metal extrusions, including modular fencing materials.”
A “barrier” is “[a] structure, such as a fence, built to bar passage.”[1] The fencing goods in the identification are used to create barriers. The examining attorney encloses excerpted articles from the Nexis® computerized data base news system showing use of “barrier” in context with metal fencing. The Trademark Trial and Appeal Board has held that materials obtained through computerized text searching are competent evidence to show the descriptive use of terms under Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1). In re National Data Corp., 222 USPQ 515, 517 n.3 (TTAB 1984).
Because the word BARRIER is descriptive of fence and barrier goods, the examining attorney must refuse registration on the Principal Register. Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1); TMEP section 1209 et seq.
If the applicant were permitted to amend to the Supplemental Register (which it is not), an application filed under Trademark Act Section 1(b), 15 U.S.C. Section 1051(b), on the basis of a bona fide intent to use the mark in commerce, may not be amended to the Supplemental Register until the applicant files an acceptable amendment to allege use under 37 C.F.R. Section 2.76 or an acceptable statement of use under 37 C.F.R. Section 2.88. 37 C.F.R. Section 2.47(c); TMEP section 1105.01(a)(vii).
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 issues.
The applicant’s name is listed as SFERCO PTY. LIMITED in the body of the application, but SFERCOL PTY. LIMITED on the drawing page. It is noted that Craig Sferco signed the application. The applicant must clarify this ambiguity by specifying the correct spelling of the applicant’s name. TMEP § 803.02.
The identification of goods is indefinite because the applicant uses the wording :”including.” The identification of goods must be specific and all-inclusive. TMEP § 1402.01.
The wording “fencing elements,” metal extrusions,” and ”fencing materials” is unacceptable as indefinite. The applicant must amend the identification to specify the common commercial name and material composition of the goods. TMEP §1402.
If accurate, the applicant may use:
Metal gates and metal modular fencing, in class 6; and/or
Non-metal gates and non-metal modular fencing, in class 19.
For your convenience, the Trademark Acceptable Identification of Goods and Services Manual is available on the Office’s web site at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/. The Manual includes explanations and notices of classification policy, and provides examples of acceptable identifications.
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.
The application identifies goods and/or services that may be classified in several international classes. Therefore, the applicant must either: (1) restrict the application to the number of class(es) covered by the fee already paid, or (2) pay the required fee for each additional class(es). 37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1401.04, 1401.04(b) and 1403.01.
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 goods and services by international class with the classes listed in ascending numerical order. TMEP section 1113.01.
(2) The applicant must submit a filing fee for each international class of goods and services not covered by the fee already paid. 37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1401.04, 1401.04(b) 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.
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
Effective January 1, 2003, the fee for filing an application for trademark registration will be increased to $335.00 per International Class. The USPTO will not accord a filing date to applications that are 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.
A Final Rule amending the Rules of Practice in Trademark Cases to provide for this fee increase was published in the Federal Register on November 27, 2002 (67 Fed. Reg. 70,847 (2002)). http://a257.g.akamaitech.net/7/257/2422/14mar20010800/edocket.access.gpo.gov/2002/02-30086.htm.
/Robert H. Coggins/
Attorney-Advisor
Law Office 115
U.S. Patent and Trademark Office
official response: ecom115@uspto.gov
703-308-9115 ext.111
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.
MAIL-IT REQUESTED: MAY 21, 2003 10083K
CLIENT: SFERCO PTY
LIBRARY: NEWS
FILE: US
YOUR SEARCH REQUEST AT THE TIME THIS MAIL-IT WAS REQUESTED:
"METAL FENCE BARRIER"
NUMBER OF STORIES FOUND WITH YOUR REQUEST THROUGH:
LEVEL 1... 10
LEVEL 1 PRINTED
THE SELECTED STORY NUMBERS:
1-2
DISPLAY FORMAT: 30 VAR KWIC
SEND TO: COGGINS, ROBERT
TRADEMARK LAW LIBRARY
2101 CRYSTAL PLAZA ARC
MAILBOX 314
ARLINGTON VIRGINIA 22202-4600
**********************************06267**********************************
Copyright 2002 Houston Press, LP
Houston Press (Texas)
December 12, 2002 Thursday
SECTION: Music/Featured Stories
LENGTH: 1191 words
HEADLINE: November Pain
Call 'em Guns N' Poseurs if you like, but Axl Rose can still incite riots with the best of them
BYLINE: By Greg Barr
BODY:
... two hours before the band was supposed to go on. Cancellation notices were pasted up inside the ticket windows, and the more than 8,000 fans outside GM Place, in the immortal words of Fred Durst, "wanted to break stuff." The mob snatched metal fence barriers and used them as battering rams to break windows. Baton-wielding riot police waded in. Bedlam reigned for about an hour.
COMPANY: AXL & CO (86%);
Copyright 2001 Denver Publishing Company
Rocky Mountain News (Denver, CO)
August 13, 2001 Monday Final Edition
SECTION: LOCAL; Pg. 6A
LENGTH: 640 words
HEADLINE: ON THE TOWN
BYLINE: Penny Parker
BODY:
... concert.
"Somebody said someone pulled that grass," said Ronish, wearing a yellow security shirt, and bouncing between the field-level seats and the patch of exposed grass beneath a stand of speakers. "I figured somebody was smoking dope."
Metal fence barriers flanked the giant speaker stand, leaving an exposed portion of the field where the Broncos will play. Fans (including yours truly) couldn't resist copping a feel of the pristine turf.
"It's OK to touch it," said one security ...
MAIL-IT REQUESTED: MAY 21, 2003 10083K
CLIENT: SFERCO PTY
LIBRARY: NEWS
FILE: US
YOUR SEARCH REQUEST AT THE TIME THIS MAIL-IT WAS REQUESTED:
"METAL BARRIER FENCE"
NUMBER OF STORIES FOUND WITH YOUR REQUEST THROUGH:
LEVEL 1... 3
LEVEL 1 PRINTED
THE SELECTED STORY NUMBERS:
1-3
DISPLAY FORMAT: 30 VAR KWIC
SEND TO: COGGINS, ROBERT
TRADEMARK LAW LIBRARY
2101 CRYSTAL PLAZA ARC
MAILBOX 314
ARLINGTON VIRGINIA 22202-4600
**********************************06284**********************************
Copyright 2000 The Sunday Oklahoman
Daily Oklahoman (Oklahoma City, OK)
September 17, 2000, Sunday CITY EDITION
SECTION: NEWS;
LENGTH: 135 words
HEADLINE: Girl shocked on fair ride
BODY:
A young girl received an electrical shock when she stumbled over
a cord and touched a metal barrier fence at a ride at the State
Fair of Oklahoma.
The girl, whose name and age was not released, went to the first
aid station for help, said Frank Zaitscik, president and general
manger of Wade Show Inc. carnival supplier to the Oklahoman ...
Copyright 2000 Caller-Times Publishing Company
Corpus Christi Caller-Times (Texas)
July 31, 2000, Monday
SECTION: Letters to the Editor; Pg. A8
LENGTH: 1355 words
HEADLINE: Letters to the Editor
BODY:
... in life. So what is the solution and lesson to be learned? Support the efforts of Industrial Fabricators, Junior League, Marina, City Park and Recreation, Dusty Durrill of the Devary Durrill Foundation, and, most importantly, the Quintanillas in their decision to erect the 4-foot high metal "barrier" fence around Selena's statue.
Learn to protect yourself -- not with guns but with your head and heart. Don't be afraid or feel awkward in erecting a physical "barrier" between you and society. Just like in life, continue loving Selena, ...
Copyright 1984 U.P.I.
December 6, 1984, Thursday, PM cycle
SECTION: International
LENGTH: 74 words
HEADLINE: Foreign News Briefs
DATELINE: KASSEL, West Germany
BODY:
An unarmed East German border guard escaped to West Germany unhurt after scaling a double row of metal barrier fences, West German border patrol officials said today.
They said the 23-year-old soldier came over the border Wednesday afternoon at a spot not far from the Hessian city of Fulda, about 70 miles east of Frankfurt.
They ...
MAIL-IT REQUESTED: MAY 21, 2003 10083K
CLIENT: SFERCO PTY
LIBRARY: NEWS
FILE: US
YOUR SEARCH REQUEST AT THE TIME THIS MAIL-IT WAS REQUESTED:
"MODULAR BARRIER"
NUMBER OF STORIES FOUND WITH YOUR REQUEST THROUGH:
LEVEL 1... 2
LEVEL 1 PRINTED
THE SELECTED STORY NUMBERS:
1-2
DISPLAY FORMAT: 30 VAR KWIC
SEND TO: COGGINS, ROBERT
TRADEMARK LAW LIBRARY
2101 CRYSTAL PLAZA ARC
MAILBOX 314
ARLINGTON VIRGINIA 22202-4600
**********************************06854**********************************
Copyright 2002 The Florida Times-Union
Florida Times-Union (Jacksonville, FL)
August 4, 2002 Sunday, City Edition
SECTION: SPORTS;
Pg. C-1
LENGTH: 1649 words
HEADLINE: SOFT WALLS NASCAR uses system for first time
BYLINE: Don Coble, Times-Union sports writer
BODY:
... in boat dock cushions in a test at the Lowe's Motor Speedway in Concord, N.C., two years ago. With the help of speedway officials, a car was dropped by a crane onto a layer of Soft-Wall Modular Barriers.
The raceway was impressed enough that it installed the modular barrier along the inside walls in two of the most-critical areas of the speedway -- Turns 2 and 4.
The most-significant impact into that Soft-Wall barrier was Ricky Bogan's crash in the second turn during an ARCA Series test session ...
Copyright 2000 Crain Communications, Inc.
Plastics News
October 9, 2000, Monday
SECTION: Pg. 10
LENGTH: 798 words
HEADLINE: Racetrack tests foam to cushion crashes
BYLINE: Joseph Pryweller, PLASTICS NEWS STAFF
... said. "But it wasn't just a media event. We were well-pleased. If we can find something that can take more force off the guys taking the hit, we'll try anything."
For its next test, Lowe's plans to install the modular barriers on high-accident sections of wall. The blocks will be in place before several Busch Series and Winston Cup races at the track Oct. 7-8.
The speedway also has received inquiries from other companies and individuals working on encased ...
[1]The American Heritage® Dictionary of the English Language, Third Edition copyright © 1992 by Houghton Mifflin Company. Electronic version licensed from INSO Corporation; further reproduction and distribution restricted in accordance with the Copyright Law of the United States. All rights reserved.