UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/477416
APPLICANT: The National Federation of Business and ETC.
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CORRESPONDENT ADDRESS: IRA EDELL EPSTEIN, EDELL, SHAPIRO, FINNAN 1901 RESEARCH BOULEVARD, SUITE 400 ROCKVILLE, MARYLAND 20850
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom114@uspto.gov
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MARK: NATIONAL BUSINESS WOMEN'S WEEK
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CORRESPONDENT’S REFERENCE/DOCKET NO: 0270.0003T
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 76/477416
The assigned examining attorney has reviewed the referenced application and determined the following.
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 applicant seeks to register the mark “NATIONAL BUSINESS WOMEN’S WEEK” for honoring and promoting public awareness of the achievement of working women. The applicant’s specimens indicate that the services include a week for honoring and promoting business women nationally. Thus, the mark is descriptive and must be refused registration pursuant to Section 2(e)(1) of the Trademark Act.
The application indicates use of the mark for a significant time. Therefore, the applicant may amend to seek registration under Trademark Act Section 2(f), 15 U.S.C. §1052(f), based on acquired distinctiveness. If the applicant chooses to do so by using the statutory suggestion of five years of use as proof of distinctiveness, the applicant should submit a claim of distinctiveness that reads as follows, if accurate.
The mark has become distinctive of the goods/services through the applicant’s substantially exclusive and continuous use in commerce for at least the five years immediately before the date of this statement.
The applicant must provide this statement supported by an affidavit or a declaration under 37 C.F.R. §2.20. 37 C.F.R. §2.41(b); TMEP §1212.05(d).
If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informalities.
The recitation of services is unacceptable as indefinite. The applicant must amend the recitation to indicate the nature of the services and their particular field. TMEP §1402.11.
The applicant may adopt the following recitation of services, if accurate:
International Class 35; association services, namely, honoring and promoting public awareness of the achievement of working women.
The applicant must insert a disclaimer of BUSINESS WOMEN’S WEEK in the application because it is highly descriptive of a feature or purpose of the services. 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 BUSINESS WOMEN’S WEEK apart from the mark as shown.
The applicant must insert the required disclaimer even if registration of the mark is sought on the Supplemental Register or on the Principal Register under Section 2(f), because it is, at least, highly descriptive of the subject services. In re Wella Corp., 565 F.2d 143, 196 USPQ 7 (C.C.P.A. 1977); In re Creative Goldsmiths of Washington, Inc., 229 USPQ 766 (TTAB 1986); In re Carolyn’s Candies, Inc., 206 USPQ 356 (TTAB 1980); TMEP §1213.03(b).
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.
/Matthew C. Kline/
Trademark Examining Attorney
Law Office 114
(703) 308-9114 x 148
e-mail: ecom114@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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.