Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

Serial Number  76/460712

 

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE.   FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.

 

FINAL ACTION

 

This letter responds to the applicant's communication filed on December 2, 2003.

 

The Office has reassigned this application to the undersigned examining attorney.

 

SPECIMEN UNACCEPTABLE

 

The applicant was previously required to submit a substitute specimen showing use of the mark in commerce for the identified goods.  The original specimen was found to be unacceptable as it does not show use of the mark “DuraPro” for the identified goods, namely faucets, but only shows use of the mark for the underbody feature sold as a component of finished faucets.   The commercial impression created by use of the mark in the original specimen identifies only a component of a product, and not the entire product.  Thus, either the identification should precisely set forth the component identified by the mark or the applicant must submit a substitute specimen showing use of the mark for the goods as originally identified.  TMEP Section 1402.05(a).

 

The applicant has responded by indicating that the mark was adopted by the applicant to reflect that the underbody of its faucets are manufactured using a molding process that is distinguishable from competitors, and that “consumers seeing the ‘DURAPRO’ marking will come to recognize that the product originates with Phoenix Products, Inc.”  Applicant’s Response at p. 2.

 

In an application under §1 of the Act, the examining attorney must determine whether the subject matter for which registration is sought is used as a trademark by reviewing all evidence (e.g., the specimens of use and any promotional material) of record in the application.  See In re Safariland Hunting Corp., 24 USPQ2d 1380 (TTAB 1992) (examining attorney should look primarily to specimens to determine whether a designation would be perceived as a source indicator, but may also consider other evidence, if there is other evidence of record).  While it may be the intention of the applicant to have the term “DuraPro” serve to distinguish the applicant’s faucets from those of others, the manner in which the term is used on the current specimen identifies only a component of finished goods.  The Trademark Trial and Appeal Board has noted that “not everything that a party adopts and uses with the intent that it function as a trademark necessarily achieves this goal or is legally capable of doing so and not everything that is recognized or associated with a party is necessarily a registrable trademark.”  See TMEP Section 1202 quoting In re Standard Oil Co., 275 F.2d 945, 947, 125 USPQ 227, 229 (C.C.P.A. 1960).  

 

Review of the specimens indicates that the term is thus not functioning as a trademark for goods other than the component underbodies.  If the applicant elects to amend the identification of goods to specify only those component features in the nature of underbodies of faucets, the examining attorney will withdraw the requirement for a substitute specimen.  Otherwise, the requirement for a substitute specimen is maintained and made FINAL.

 

In the alternative, the applicant may adopt the following identification of goods:  “molded faucet underbodies sold as a component of finished faucets in International Class 11.”

 

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.

 

RESPONSE

 

Please note that the only appropriate responses to a final action are (1) compliance with the outstanding requirements, if feasible, (2) filing of an appeal to the Trademark Trial and Appeal Board, or (3) filing of a petition to the Director if permitted by 37 C.F.R. §2.63(b). 37 C.F.R. §2.64(a); TMEP §715.01.  Regarding petitions to the Director, see 37 C.F.R. §2.146 and TMEP Chapter 1700.  If the applicant fails to respond within six months of the mailing date of this refusal, this Office will declare the application abandoned.  37 C.F.R. §2.65(a). 

 

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

 

 

 

Jennifer D. Chicoski

Trademark Examining Attorney

Law Office 115

(703) 308-9115 x117

(703) 872-9208 - Fax

jennifer.chicoski@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