UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/466566
APPLICANT: A.L. DOERING SPARK PLUG CORP.
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CORRESPONDENT ADDRESS: MICHAEL I. KROLL 171 STILLWELL LN SYOSSET NY 11791-1913
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3513 ecom111@uspto.gov
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MARK: SMART PLUG
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CORRESPONDENT’S REFERENCE/DOCKET NO: ALD-4
CORRESPONDENT EMAIL ADDRESS:
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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.
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Serial Number 76/466566
The assigned examining attorney has reviewed the referenced application and determined the following.
Although the examining attorney has searched the Office records and has found no similar registered mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), the examining attorney encloses information regarding pending Application Serial Nos. 76129741 and 78032610. 37 C.F.R. §2.83.
There may be a likelihood of confusion between the applicant’s mark and the marks in the above noted applications under Section 2(d) of the Act. The filing dates of the referenced applications precede the applicant’s filing date. If one or more of these earlier‑filed applications matures into a registration, the examining attorney may refuse registration under Section 2(d).
The applicant should also note the following additional ground for refusal.
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’s mark is SMART PLUG for automobile spark plugs. However, the proposed mark merely combines the descriptive terms SMART and PLUG. Here, the term SMART conveys a feature of the goods in that it immediately tells consumer that the applicant’s spark plugs utilize “smart.” Technology. Please see the attached evidence. The additional term PLUG immediately conveys a feature of the goods – i.e., spark plugs. Hence, the descriptive nature of the combined terms SMART PLUG is clear – i.e., spark plugs with smart technology.
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.
INFORMALITIES
The applicant has classified the goods incorrectly. The applicant must amend the application to classify the goods in International Class 7. 37 C.F.R. Sections 2.33(a)(1)(vi) and 2.85; TMEP sections 805 and 1401.
If the mark is determined to be otherwise registrable, the applicant must still disclaim the generic wording “PLUB” apart from the mark as shown.
The computerized printing format for the Trademark Official Gazette requires a standard form for a disclaimer. TMEP section 1213.09(a)(i). A properly worded disclaimer should read as follows:
No claim is made to the exclusive right to use PLUG apart from the mark as shown.
See In re Owatonna Tool Co., 231 USPQ 493 (Comm'r Pats. 1983).
CONCLUSION
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
/Ingrid C. Eulin/
Ingrid C. Eulin
Trademark Examining Attorney
Law Office 111
(703) 308-9111 ext 424
(703) 308-7191 by fax
(703) 746-8111 b
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.