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  76/460358

 

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

 

NO CONFLICTING MARKS:

 

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 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).

 

Also, it is not necessary that a term describe all of the purposes, functions, characteristics or features of the goods to be merely descriptive.  It is enough if the term describes one attribute of the service.  In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973). Moreover, the combination of merely descriptive components or elements has been found registrable only if the juxtaposition of the words in inventive or evokes a unique commercial impression.  In re Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382 (C.C.P.A. 1968); In re TBG Inc., 229 USPQ 759 (TTAB 1986).

 

In the present instance, the proposed mark is “KEEP AWAY” for “repellant.” The applicant’s proposed mark is merely descriptive as it immediately conveys information about the type and nature of the applicant’s services. The examining attorney presently explains.

 

First, the applicant has combined two very descriptive terms whose resulting combination is neither inventive nor evokes a unique commercial impression. See attached definitions. In addition, the applicant’s specimen of record indicates that the applicant’s goods “keep pets away.”

 

It is also well settled that instructional informational marks are merely descriptive within the meaning of Section 2(e)(1) and unregisterable.  In re Guido 153 USPQ 689 (TTAB 1967) (STEP-ON-IT held merely descriptive of a dust pan having a resilient ramp which is activated by stepping on the ramp.); In re St. Paul Hydraulic Hoist Company 83 USPQ 315 (C.C.P.A. 1949) (DUMP-IT held merely descriptive of hydraulic operated units raising or tilting truck bodies to effect dumping of contents of bodies since it describes only a function and sole purpose of units.) Ex parte Schalet-Pollack Corporation (Patent Officer Examiner in Chief 1954). (PIN-ON is descriptive of buttons made with pin clasps attached for pinning them on garments).  Thus, given the instructional informative nature of applicant's mark as well, this examiner finds that the entire mark is further descriptive of the goods and registration is therefore refused.

 

Accordingly, the mark is merely descriptive of the applicant’s services and is refused registration on the Principal Register under Section 2(e)(1) of the Trademark Act.

 

RESPONSE:

 

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.    

 

OVERCOMING THE REFUAL:

 

Although the examining attorney has refused registration on the Principal Register, the applicant may amend the application to seek registration on the Supplemental Register.  Trademark Act Section 23, 15 U.S.C. §1091; 37 C.F.R. §§2.47 and 2.75(a); TMEP §§801.02(b), 815 and 816 et seq.

 

 

 

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

 

 

 

/Brian D. Brown/

Trademark Attorney

Law Office 105

(703) 308-9105 ext. 178

(703) 872-9825 fax

ecom105@uspto.gov

 

 

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.

 

FEE INCREASE:

 

Fee increase effective January 1, 2003

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 for classes added on or after January 1, 2003.

 

 

 

 

keep

 
keep (kêp) verb

kept (kèpt) keep·ing, keeps verb, transitive

1.    To retain possession of: kept the change; must keep your equanimity.

2.    To have as a supply: keep a cord of wood in the shed.

3.    To provide (a family, for example) with maintenance and support: “There's little to earn and many to keep” (Charles Kingsley).

4.    To put customarily; store: Where do you keep your saw?

5.    a. To supply with room and board for a charge: keep boarders. b. To raise: keep chickens.

6.    To maintain for use or service: a city dweller who didn't keep a car.

7.    To manage, tend, or have charge of: Keep the shop while I'm away.

8.    To preserve (food).

9.    To cause to continue in a state, condition, or course of action: attempted to keep the patient calm.

10.  a. To maintain records in: keep a yearly diary. b. To enter (data) in a book: keep financial records.

11.  a. To detain: was kept after school. b. To restrain: kept the child away from the hot stove; kept the crowd back with barriers. c. To prevent or deter: tried to keep the ice from melting. d. To refrain from divulging: keep a secret. e. To save; reserve: keep extra money for emergencies.

12.  To maintain: keep late hours.

13.  To adhere to; fulfill: keep one's word; keep a busy schedule.

14.  To celebrate; observe.

 

verb, intransitive

1.    To remain in a state or condition; stay: keep in line; keep quiet; kept well.

2.    To continue to do: keep on talking; keep guessing.

3.                        To remain fresh or unspoiled: The dessert won't keep.[1]

 

a·way

 
a·way (e-wâ¹) adverb

1.    From a particular thing or place: ran away from the lion; sent the children away to boarding school.

2.    a. At or to a distance in space or time: We live a block away from the park. b. At or by a considerable interval: away back in the 17th century; away off on the horizon.

3.    a. In a different direction; aside: glanced away. b. On the way: We want to get away early in the day.

4.    In or into storage or safekeeping: put the toys away; jewels locked away in a safe.

5.    Out of existence or notice: The music faded away.

6.    So as to remove, separate, or eliminate: chipped the paint away; cleared away the debris.

7.    From one's possession: gave the tickets away.

8.                     Continuously; steadily: toiled away at the project for more than a year.

9.    Freely; at will: Fire away! [2]