UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/475506
APPLICANT: Meredith Corporation
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CORRESPONDENT ADDRESS: KATHY J. MCKNIGHT SHAW PITTMAN 2300 N ST NW WASHINGTON DC 20037-1122
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom111@uspto.gov
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MARK: SHOP TESTED WOOD MAGAZINE APPROVED
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CORRESPONDENT’S REFERENCE/DOCKET NO: 18596.0796
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 76/475506
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. Section 1052(d). TMEP section 1105.01.
DELETION FROM MARK
The TM symbol is not part of the mark, and the applicant should delete this from the drawing. TMEP sections 807.03 and 807.13(a).
The applicant must disclaim the descriptive wording "WOOD MAGAZINE, SHOP TESTED, APPROVED" apart from the mark as shown. Trademark Act Section 6, 15 U.S.C. Section 1056; TMEP sections 1213 and 1213.02(a). The wording is merely descriptive of the subject matter of the magazine and the fact that it provides “shop tested” results which have been approved by the applicant.
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 WOOD MAGAZINE, SHOP TESTED, APPROVED apart from the mark as shown.
See In re Owatonna Tool Co., 231 USPQ 493 (Comm'r Pats. 1983).
Trademark Act Section 6(a), 15 U.S.C. Section 1056(a), states that the Commissioner may require the applicant to disclaim an unregistrable component of a mark. Trademark Act Section 2(e), 15 U.S.C. Section 1052(e), bars the registration of a mark which is merely descriptive or deceptively misdescriptive, or primarily geographically descriptive or deceptively misdescriptive of the goods. Therefore, the Commissioner 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 or deceptively misdescriptive. If an applicant does not comply with a disclaimer requirement, the examining attorney may refuse registration of the entire mark. TMEP section 1213.01(b).
A disclaimer does not remove the disclaimed matter from the mark. It is simply a statement that the applicant does not claim exclusive rights in the disclaimed wording or design apart from the mark as shown in the drawing.
The recitation of services is unacceptable as indefinite. The applicant may adopt the following recitation, if accurate. TMEP section 1301.05.
Class 42: Testing, analysis and evaluation of the goods and services of others for the purpose of certification.
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. Section 2.71(b); TMEP section 804.09. Therefore, the applicant may not amend to include any services that are not within the scope of the services recited in the present identification.
For assistance regarding an acceptable listing of goods and/or services, please see the on‑line searchable Manual of Acceptable Identifications of Goods and Services, at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.
RESPONSE
The following authorities govern the processing of trademark and service mark applications: The Trademark Act, 15 U.S.C. Section 1051 et seq., the Trademark Rules of Practice, 37 C.F.R. Part 2, and the Trademark Manual of Examining Procedure (TMEP).
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
/Margery A. Tierney/
Examining Attorney, Law Office 111
(703) 308-9111, ext 220
email: margery.tierney@uspto.gov
Fax: (703) 746-6402
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.