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  76/461366                                            MARK:  DIARY (WITH A DESIGN)

 

This letter responds to the applicant's communication filed on September 9, 2003.

 

In the applicant’s response, the applicant amended the application by:  (1) amending the identification of goods (2) responding, in part, to the disclaimer request; (3) providing a translation of the non-Latin characters, namely, the Hebrew characters in the mark and (4) providing a the required standards for a certification mark.   The applicant’s amendment regarding the translation of the non-Latin characters in the mark is acceptable and has-been entered.  The applicant’s amendments regarding the identification of goods and the disclaimer are not acceptable and have not been entered for the reasons set out below.   In addition, with respect to the applicant’s information regarding the translation of the Hebrew, the following refusal is made based on Section 2(e)(1) of the Trademark Act.  Due to the new issues raised in this office action, this action in non-final in nature.

 

 

 

 

 

 

NEW ISSUE

 

MARK IS MERELY DESCRIPTIVE

The examining attorney refuses registration on the Principal Register because the proposed mark merely describes the applicant’s 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 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 section 1209.01(b).  The applicant has applied to register the mark, with the translation incorporated “KOSHER DIARY” with a geographical descriptive design to be used in connection with  “foods and prepared foods products.”  The wording that comprises the applicant’s mark is immediately descriptive of the applicant’s goods.  The wording DAIRY is descriptive of the goods, and is arguably, generic.  The non-Latin characters in the mark are Hebrew characters, which translate to into English as “KOSHER.” “KOSHER” is defined as  “Judaism; conforming to dietary laws; ritually pure: kosher meat; Selling or serving food prepared in accordance with dietary laws.”[1]  The design component in the mark is representative of the state of West Virginia, “a state of the east-central United States. Charleston is the capital and the largest city.”[2]  The applicant is domiciled in Charleston, West Virginia.   The applicant’s mark also contains a design component, which is representative of the state of West Virginia.  The applicant has asserted in the applicant’s response that the geographic component in the mark is “not to certify that the source of the goods which the mark will certify will originate in West Virginia or any other particular region. The design component is only indicative that the certifier, the applicant is located in West Virginia.”   The applicant was previously advised that when geographical term is used as part of the mark, there are certain requirements that must be satisfied if the component is to exempt from being considered descriptive or refused.   However, when a geographical term used in a composite certification mark is not used to certify regional origin, the examining attorney should refuse registration or require a disclaimer, as appropriate.   See TMEP Section 1306.01.  The same standards are used to determine the registrability of certification marks that are used for other types of marks.  Thus, the standards generally applicable to trademarks and service marks are used in considering issues such as descriptiveness, disclaimers, and likelihood of confusion.  (But see TMEP §§1306.02 et seq. regarding certification marks indicating regional origin only.)

 

 

 

 

 

It is not necessary that a term describe all of the purposes, functions, characteristics or features of the services to be merely descriptive.  It is enough if the term describes one attribute of the goods/services. In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973). 

 

SUPPLEMENTAL REGISTER

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. Section 1091; 37 C.F.R. Sections 2.47 and 2.75(a); TMEP sections 202.02(b) and 1115.

 

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.

 

IDENTIFCATION OF GOODS – AMENDMENT REQUIRED

The applicant is required to amend the goods that the applicant intends to certify.  While general types of goods are usually acceptable, the applicant’s use of the broad term “food and prepared foods” is too broad and is not.     The applicant must amend the application to identify more specifically the type of food goods, which are certified.  TMEP §1306.06(f) Accordingly, the requirement is continued and maintained.   See TMEP 1306.06(f).

 

The applicant may adopt the following, if accurate: 

 

CLASS A

“Foods and prepared foods, namely, [please specify the nature of the goods] _____________.”

 

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.

 

APPLICATION FEE INCREASE  - ADVISORY ONLY

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.  37 C.F.R. §2.6(a)(1). 

 

DISCLAIMER - ADVISORY

If the mark is determined to be otherwise registrable, the applicant must still disclaim the following unregistrable matter.

 

The applicant must insert a disclaimer of “DAIRY” in the application.3  Trademark Act Section 6, 15 U.S.C. Section 1056; TMEP sections 1213 and 1213.09(a)(i).

 

A properly worded disclaimer should read as follows:

 

            No claim is made to the exclusive right to use  “DIARY” apart from the mark as shown.

 

The applicant must insert the required disclaimer even if registration of the mark is sought on the Supplemental Register or on the Principal Register under Section 2(f), because the term is a generic designation for the applicant’s services.  In re Wella Corp., 565 F.2d 143, 196 USPQ 7 (CCPA 1977); In re Creative Goldsmiths of Washington, Inc., 229 USPQ 766 (TTAB 1986); In re Carolyn's Candies, Inc., 206 USPQ 356 (TTAB 1980); TMEP section 1213.02(b).

 

Georgia Ann Carty

/Georgia Ann Carty/

Trademark Attorney

Law Office 111

(703) 308-9111, Ext. 150

ecom 111 @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 SPECIFIC INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.