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  76/479046

 

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

 

SEARCH OF OFFICE RECORDS

 

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.

 

REGISTRATION

 

Descriptiveness

 

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 proposed mark merely describes a feature of the goods; specifically the applicant will offer a SERIES of skates.  The term COMFORT is laudatory of the goods.  One would not want to purchase uncomfortable skates!  As evidence of the descriptive nature of the proposed mark, the examining attorney provides dictionary definitions of the terms of the mark.  See attached definitions of comfort and series from The American Heritage Dictionary.

 

Registration of the proposed mark must, therefore, be refused.  The applicant may, however, offer evidence in support of registration.

 

INFORMALITIES

 

If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informalities:

 

 

Application Unsigned

 

The application must be signed, and verified or supported by a declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.33.  No signed verification or declaration was provided.  Therefore, the applicant must provide a signed verification or signed declaration attesting to the facts set forth in the application.

 

If the application is based on use in commerce under Trademark Act Section 1(a), 15 U.S.C. §1051(a), the verified statement must include an allegation that the mark is in use in commerce and was in use in commerce on or in connection with the goods or services listed in the application as of the application filing date.  37 C.F.R. §2.34(a)(1)(i); TMEP §§804.02, 806.01(a) and 901. 

 

If the application is based on Trademark Act Section 1(b) or 44, 15 U.S.C. §1051(b) or 1126, the verified statement must include an allegation that the applicant had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the application filing date.  37 C.F.R. §§2.34(a)(2)(i), 2.34(a)(3)(i) and 2.34(a)(4)(ii); TMEP §§804.02, 806.01(b), 806.01(c), 806.01(d) and 1101. 

 

Identification of Goods

 

The wording "skating accessories" in the identification of goods is unacceptable as indefinite.  The applicant may amend this wording to "skating accessories, namely," if accurate.  TMEP §1402.

 

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 or services that are not within the scope of the goods and services recited in the present identification.

 

If the applicant prosecutes this application as a combined, or multiple‑class, application, the applicant must comply with each of the following.

 

(1)  The applicant must list the goods/services by international class with the classes listed in ascending numerical order.  TMEP §1403.01.

 

(2)  The applicant must submit a filing fee for each international class of goods/services not covered by the fee already paid.  37 C.F.R. §§2.6(a)(1) and 2.86(a); TMEP §§810.01 and 1403.01.  Effective January 1, 2003, the fee for filing a trademark application is $335 for each class.  This applies to classes added to pending applications as well as to new applications filed on or after that date.  

 

Applicant’s Response

 

No set form is required for response to this Office action.  The applicant must respond to each point raised.  Additional information is available on-line at the Patent and Trademark Office site on the global computer network.  The site is located at WWW.USPTO.GOV.

 

/wgb/

William Breckenfeld

Trademark Attorney

Law Office 113

703-308-9113 x158 Phone

703-746-8113 Fax

ecom113@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 INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.

com·fort

 
com·fort (kùm¹fert) verb, transitive

com·fort·ed, com·fort·ing, com·forts

1.    To soothe in time of affliction or distress.

2.    To ease physically; relieve.

 

noun

1.    A condition or feeling of pleasurable ease, well-being, and contentment.

2.    Solace in time of grief or fear.

3.    Help; assistance: gave comfort to the enemy.

4.    One that brings or provides comfort.

5.    The capacity to give physical ease and well-being: enjoying the comfort of my favorite chair.

 [Middle English comforten, from Old French conforter, to strengthen, from Late Latin confortâre : Latin com-, intensive pref.. See com- + Latin fortis, strong.]

— com¹fort·ing·ly adverb

 Synonyms: comfort, console, solace. The central meaning shared by these verbs is “to give hope or help to in time of grief or pain”: comforted the distressed child; consoling a woman on the death of her husband; solaced myself with a hot cup of coffee. See also synonyms at amenity, rest1.[1]

 

se·ries

 
se·ries (sîr¹êz) noun

plural series

Abbr. ser.

1.    A number of objects or events arranged or coming one after the other in succession.

2.    Physics & Chemistry. A group of objects related by linearly varying successive differences in form or configuration: a radioactive decay series; the paraffin alkane series.

3.                     Mathematics. The sum of a sequentially ordered finite or infinite set of terms.

4.    Geology. A group of rock formations closely related in time of origin and distinct as a group from other formations.

5.    Grammar. A succession of coordinate elements in a sentence.

6.    a. A succession of usually continuously numbered issues or volumes of a publication, published with related authors or subjects and similar formats. b. A succession of regularly aired television programs, each one of which is complete in and of itself.

7.    a. Sports. A number of games played one after the other by the same opposing teams. b. Baseball. The World Series.

8.    Linguistics. A set of vowels or diphthongs related by ablaut, as in sing, sang, sung, and song.

 

— idiom.

in series

In an arrangement that forms a series.

 [Latin seriês, from serere, to join.]

 Synonyms: series, succession, progression, sequence, chain, train, string. These nouns denote a number of things placed or occurring one after the other. Series refers to like, related, or identical things arranged or occurring in order: a series of days; a series of facts. A succession is a series whose elements follow each other, generally in order of time and without interruption: a succession of failures. A progression is a series that reveals a definite pattern of advance: a geometric progression. In a sequence things follow one another in chronological or numerical order or in an order that indicates a causal or logical relationship or a recurrent pattern: a natural sequence of ideas. Chain suggests a series of things that are closely linked or connected: the chain of command; a chain of proof. Train can apply to a procession of people, animals, or vehicles or to a sequence of ideas or events: a train of mourners; my train of thought. A string is a continuous series or succession of similar or uniform elements likened to objects threaded on a long cord: a string of islands; a string of questions.

 Usage Note: Series is both a singular and a plural form. When it has the singular sense of “one set,” it takes a singular verb, even when series is followed by of and a plural noun: A series of lectures is scheduled. When it has the plural sense of “one or more sets,” it takes a plural verb: Two series of lectures are scheduled: one for experts and one for laypeople.[2]