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  76/473533                         MARK:  CABINET VISION (WITH A DESIGN)

 

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

 

NO CONFLICTING REGISTERED MARK NOTED

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.

 

RECITATION OF SERVICES/IDENTIFICATION OF GOODS

The identification of goods is unacceptable as indefinite.  The applicant is referred to the Office’s website at www.gov.uspto.report/web/offices/tac/doc/gsmaual/ for additional information regarding the classification and identification of the applicant's goods.

 

The applicant may adopt the following identification, if accurate: 

 

 

 

 

IDENTIFICAITON OF GOODS

 

CLASS 9

“Computer programs, namely, software for use in developing and planning custom cabinetry or architectural casework, software used to architecturally simulate and render designs of custom cabinetry or architectural casework in a computer graphic format, software for use in creating a custom database of customer information, software to use in tracking components used in the creation of custom cabinetry or architectural casework and software for use in generating machine ready code for use in the creation of custom cabinetry or architectural casework.”

 

RECITATION OF SERVICES

 

CLASS 41

“Computer education training services.”

 

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.

 

DISCLAIMER

Trademark Act Section 6(a), 15 U.S.C. §1056(a), permits the Office to require a disclaimer of an unregistrable component of a mark.  Trademark Act Section 2(e), 15 U.S.C. §1052(e), bars the registration of a mark which is merely descriptive or deceptively misdescriptive, or primarily geographically descriptive of the goods. Therefore, the examining attorney may require the disclaimer of a portion of a mark which, when used in connection with the goods or services, is merely descriptive or deceptively misdescriptive, or primarily geographically descriptive.  If an applicant does not comply with a disclaimer requirement, the examining attorney may refuse registration of the entire mark.  TMEP §1213.01(b).

 

The applicant must insert a disclaimer of “CABINET” in the application because the wording is a feature of the applicant’s goods and services. See: CABINET: “[a]n upright, cupboardlike repository with shelves, drawers, or compartments for the safekeeping or display of a collection of objects or materials.”[1]  Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.08(a)(i).

 

A properly worded disclaimer should read as follows:

 

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

 

SPECIMENS ARE UNACCEPTABLE FOR THE SPECIFIED GOODS

The specimen is unacceptable as evidence of actual service mark use because they appear to be advertisement.  Invoices, announcements, order forms, bills of lading, leaflets, brochures, publicity releases and other printed advertising material generally are not acceptable specimens for goods.  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).  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.

 

 

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.