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  76/472734

 

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

 

No Similar 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.

 

Specimen Unacceptable

 

The specimen is unacceptable as evidence of actual trademark use because (1) it is an advertising excerpt from a web page, (2) the proposed mark is buried in text, and (3) the proposed mark appears to describe a “surface treatment” and not goods.

 

Web pages, invoices, announcements, order forms, bills of lading, leaflets, brochures, publicity releases and other printed advertising material generally are not acceptable specimens.  In re Bright of America, Inc., 205 USPQ 63 (TTAB 1979); TMEP §§904.05 and 904.07.  See In re Ultraflight Inc., 221 USPQ 903 (TTAB 1984).

 

A term does not function as a trademark unless it is used in a manner which clearly projects to purchasers a single source of the goods or services.  In re Morganroth, 208 USPQ 284 (TTAB 1980).  The Trademark Trial and Appeal Board has stated that the public should not be “required or expected to browse through a group of words, or scan an entire page” in order to determine whether a word or group of words is intended to act as a source indicator.  In re Morganroth, 208 USPQ 284 (TTAB 1980), citing Ex Parte National Geographic Society, 83 USPQ 260 (TTAB 1949).

 

The examining attorney refuses registration because the proposed mark merely identifies a “surface treatment” as used on the specimen of record.  The proposed mark, as used, would not be perceived as a trademark.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051, 1052 and 1127.  See In re Bose Corp., 546 F.2d 893, 192 USPQ 213 (C.C.P.A. 1976); In re Griffin Pollution Control Corp., 517 F.2d 1356, 186 USPQ 166 (C.C.P.A. 1975); In re Big Stone Canning Co., 169 USPQ 815 (TTAB 1971).

 

The applicant must submit a specimen showing the mark as it is used in commerce.  37 C.F.R. §2.56.  Examples of acceptable specimens are tags, labels, instruction manuals, containers, and photographs that show the mark on the goods or packaging.  TMEP §§904.04 et seq.

 

The applicant must verify, with an affidavit or a declaration under 37 C.F.R. §2.20, that the substitute specimen was in use in commerce at least as early as the filing date of the application.  37 C.F.R. §2.59(a); TMEP §904.09.

 

Pending an adequate response to the above, the examining attorney refuses registration under Trademark Act Sections 1, 2, and 45, 15 U.S.C. Sections 1051, 1052, 1053 and 1127, because the record does not show use of the proposed mark as a trademark.

 

Telephone Calls

 

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

 

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.

 

A Final Rule amending the Rules of Practice in Trademark Cases to provide for this fee increase was published in the Federal Register on November 27, 2002 (67 Fed. Reg. 70,847 (2002)). http://a257.g.akamaitech.net/7/257/2422/14mar20010800/edocket.access.gpo.gov/2002/02-30086.htm.

 

 

/Robert H. Coggins/

Attorney-Advisor

Law Office 115

U.S. Patent and Trademark Office

official response: ecom115@uspto.gov

703-308-9115 ext.111

 

 

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.