UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/473975
APPLICANT: MITSUBISHI JIDOSHA KOGYO KABUSHIKI KAISH ETC.
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CORRESPONDENT ADDRESS: JEFFREY H. KAUFMAN OBLON SPIVAK MCCLELLAND MAIER & NEUSTADT 1940 DUKE ST ALEXANDRIA VA 22314-3454
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom114@uspto.gov
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MARK: SPORTBACK
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CORRESPONDENT’S REFERENCE/DOCKET NO: 229647US33
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 76/473975
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) - Descriptive Refusal
The examining attorney refuses registration on the Principal Register because the proposed mark merely describes the goods/services. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §§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/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 §1209.01(b).
The examining attorney must consider whether a mark is merely descriptive in relation to the identified goods/services, 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 (C.C.P.A. 1978); In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985); In re American Greetings Corp., 226 USPQ 365 (TTAB 1985). TMEP §1209.01(b).
It is not necessary that a term describe all of the purposes, functions, characteristics or features of the goods/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). TMEP §1209.01(b). As demonstrated by the attached representative LEXIS-NEXIS® articles, the word SPORTBACK describes a feature or characteristic of vehicles. Thus, the proposed mark is descriptive of a feature or characteristic of the identified goods.
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 procedural issue(s).
Certificate Required
If the applicant is asserting §44(e) as a basis for registration (based on the foreign registration that will issue from the application that the applicant relied on for priority), the applicant must submit a true copy, a photocopy, a certification, or a certified copy of a foreign registration from the applicant’s country of origin. The applicant’s country of origin must either be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law. See TMEP §§1002.01, 1003.03 and 1004.
If the foreign certificate of registration is not written in English, the applicant must provide an English translation. The translator should sign the translation. See TMEP §§1004.01 and 1004.01(b).
The applicant must indicate whether the wording “SPORTBACK” has any significance in the relevant trade or industry or as applied to the goods/services. 37 C.F.R. §2.61(b). In particular, the applicant must indicate whether its vehicles feature sportbacks.
Fee Increase
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 for classes added on or after January 1, 2003.
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
Mary Boagni /meb/
Examining Attorney, Law Office 114
Telephone: (703) 308-9114 ext. 207
Law Office 114 Fax: (703) 746-8114
ecom114@ustpo.govspto.gov (for formal responses)
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.
108B8C
Print Request: Selected Document(s): 25, 26, 29, 32, 41, 60, 69
Time of Request: June 10, 2003 02:12 PM EDT
Number of Lines: 168
Job Number: 1861:0:3300247
Client ID/Project Name:
Research Information:
News Group File, All
sportback or sportsback
Send to: BOAGNI, MARY
TRADEMARK LAW LIBRARY
2101 CRYSTAL PLAZA ARC
MAILBOX 314
ARLINGTON, VIRGINIA 22202-4600
25 of 80 DOCUMENTS
Copyright 1992 Toronto Star Newspapers, Ltd.
The Record (Kitchener-Waterloo, Ontario)
May 1, 1992 Friday Final Edition
SECTION: WHEELS; Pg. E12
LENGTH: 50 words
HEADLINE: Isuzu Impulse now Geo Storm
BODY:
...months when GM of Canada did away with the Passport dealerships, but now it's back, as a hatchback and as a squared-off sportback. Look for it in your local Chevrolet-Geo store.
26 of 80 DOCUMENTS
Copyright 2000 The New York Times Company
The New York Times
June 30, 2000, Friday, Late Edition - Final
SECTION: Section F; Page 1; Column 3; Automobiles
LENGTH: 210 words
HEADLINE: Pages in the Hirshberg Sketchbook
BYLINE: By PHIL PATTON
BODY:
...weird kitlike vehicles on the street. It came with two interchangeable rear roofs, allowing it to serve as coupe, sportback station wagon or convertible with truck bed.
29 of 80 DOCUMENTS
The Associated Press
The materials in the AP file were compiled by The Associated Press. These materials may not be republished without the express written consent of The Associated Press.
August 8, 1987, Saturday, AM cycle
SECTION: Domestic News
LENGTH: 312 words
HEADLINE: Products to Make Life A Little Easier
DATELINE: MONTEREY, Calif.
BODY:
...won recognition for its ability to transform into four formats _ the hatchback sports coupe, car/truck hybrid, the open convertible and the sportback.
"We're by nature problem solvers," said Wooding, president of Peter Wooding Design Associates in Providence, R.I. "The ...
32 of 80 DOCUMENTS
Copyright 2002 Crain Communications Inc.
AutoWeek
November 25, 2002, Monday
SECTION: Pg. 8
LENGTH: 446 words
HEADLINE: Product blitz fuels Mitsubishi makeover
BYLINE: JOHN D. STOLL
BODY:
...United States has inspired Mitsubishi to swap introduction dates for the freshened Lancer, originally slated to launch in Japan and then come here. Instead, a higher-horsepower Lancer with ample exterior changes-and a sportback wagon model-will come here next fall, followed by the Japanese intro. Gagnon says the decision means Mitsubishi is finally shifting its focus from Japan to North America.
After the redone Lancer debuts, ...
41 of 80 DOCUMENTS
Copyright 2002 Wilkes Barre Times Leader
All Rights Reserved
Wilkes Barre Times Leader
November 6, 2002 Wednesday
SECTION: MOTORHEAD
LENGTH: 464 words
HEADLINE: Ride of the Week: 1993 Chevrolet Camaro RS;
The Camaro; a new level of class
BYLINE: By Michael Golubiewski; Special to the Weekender
BODY:
...headlights.
The 1993 Chevy has a Vizage Fiberglass Body Kit (one of only 10 made), as well as a fiberglass sportback rear window, a Commando spoiler and fiberglass cowl induction hood.
The Camaro has Air Ride front rods and rear ...
60 of 80 DOCUMENTS
Copyright 2000 CanWest Interactive, a division of
CanWest Global Communications Corp.
All Rights Reserved
The Star Phoenix (Saskatoon)
August 18, 2000 Friday Final Edition
SECTION: Drive; Pg. E5
LENGTH: 1171 words
HEADLINE: Life begins at 40 for Volvo: Swedish automaker introduces its 40 series of automobiles in Canada
BYLINE: Doug Sweet
DATELINE: MONTREAL
BODY:
...work as a matter of fact) but because the sporty styling of the 40 series, and especially that of the wagon, which evokes memories of the old ES1800 sportback, seems to demand the extra level of sportiness imparted by a manual gearbox.
Brakes are, as you might expect, four-wheel ...
69 of 80 DOCUMENTS
Copyright 2003 Crain Communications Inc.
AutoWeek
April 21, 2003, Monday
SECTION: Pg. 4
LENGTH: 730 words
HEADLINE: REALLY BIG SHEW; Even Ed Sullivan would have given props to this year's domestically driven New York show
BYLINE: BOB GRITZINGER
BODY:
...a third version of its crossover, a 210-hp, turbocharged 2.5-liter model. Meanwhile, Mitsubishi unveils an all-new 2004 Galant sedan, a redesigned 2004 Diamante and a sportback five-door version of the Lancer. Toyota tops off the import tank with an all-new 2004 Prius electric/gasoline hybrid and its most American car yet, the 2004 Solara coupe due ...