UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/467996
APPLICANT: Pleasant Company
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CORRESPONDENT ADDRESS: MENZI L. BEHRND-KLODT PLEASANT COMPANY 8400 FAIRWAY PL MIDDLETON WI 53562-2548
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom110@uspto.gov
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MARK: SABA
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
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 76/467996
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.
SECTION 2(e)(1) -- 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).
The examining attorney must consider whether a mark is merely descriptive in relation to the identified goods, not in the abstract. In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978); In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985).
The applicant's SABA immediately tells something about the goods – publications presumed to feature information on SABA, “an island of the northern Netherlands Antilles in the West Indies between St. Martin and St. Eustatius. First occupied by the Dutch in 1632, the island is the cone of an extinct volcano.”[1] (The applicant is referred to the attached dictionary definition of SABA.) No imagination, thought or perception is required to determine the subject matter of the goods from the terminology.
The applicant is advised that 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 goods. In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973).
For the foregoing reasons, the applicant's SABA is refused registration under Section 2(e)(1) of the Trademark Act.
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.
INFORMALITY
If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informality.
The applicant must indicate whether any of the books, booklets, bookmarks and/or posters will feature information on SABA. The applicant must also submit information on the intended topics of its books and booklets, bookmarks, and posters. 37 C.F.R. §2.61(b).
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
/Katherine Stoides/
Examining Attorney
Law Office 110
(703) 308-9110 ext.166
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.
[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.