UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/482497
APPLICANT: Network Communications, Inc.
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CORRESPONDENT ADDRESS: WILLIAM H. BREWSTER KILPATRICK STOCKTON LLP 1100 PEACHTREE STREET, SUITE 2800 ATLANTA, GEORGIA 30309
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom113@uspto.gov
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MARK: NEW HOME FINDER
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CORRESPONDENT’S REFERENCE/DOCKET NO: 51373.281530
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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PRIORITY ACTION
OFFICE SEARCH: 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 704.02.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.
Serial Number 76/482497
The following issues were discussed in communication with on ^.
Identification
The applicant has applied for the mark “NEW HOME FINDER” and design for the following:
“Publications, namely magazines in the form of guides for new homes and new home communities” in International Class 16;
“Providing real estate information in the field of new homes and new home communities via an online electronic communications network” in International Class 36.
The identification of goods under International Class 16 is acceptable. However, regarding the services listed under International Class 36, the recitation of services is unacceptable as indefinite. The applicant must amend the identification to specify the common commercial name of the services or their nature. TMEP section 804. The examining attorney additionally notes that the application identifies services that may be classified in several international classes. Therefore, the applicant must either: (1) restrict the application to the number of class(es) covered by the fee already paid, or (2) pay the required fee for each additional class(es). 37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1401.04, 1401.04(b) 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. 37 C.F.R. §2.6(a)(1).
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.
If the applicant is providing informational services, then the exact subject matter and nature of the services must be specified, which will then determine the appropriate international class placement for the services. Please note, based upon the attached specimens, the applicant’s services appear to be real estate listing oriented. The nature of the applicant’s services may include (but not limited to):
Providing information in the field of new home inspections via the global computer network
The applicant may adopt the following suggested identification, if accurate:
The suggested identification specifies and properly classifies the goods and 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 services that are not within the scope of the services recited in the present identification.
This is not an exhaustive list of identifications. Please check the Office’s website for additional acceptable identifications of goods and services at the following website:
http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/
The applicant has applied for the mark “NEW HOME FINDER” and design for the following:
“Publications, namely magazines in the form of guides for new homes and new home communities” in International Class 16;
“Providing real estate information in the field of new homes and new home communities via an online electronic communications network” in International Class 36.
A mark, or portion thereof, 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 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 section 1209.01(b).
The applicant must disclaim the descriptive wording “NEW HOME FINDER” apart from the mark as shown. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a). The wording is merely descriptive of the characteristic, feature and function of the applicant’s goods and services.
The terminology “NEW HOME FINDER” is descriptive of the characteristic, feature and function of the applicant’s goods and services, which are provided for and used to find “new homes and new home communities” (as listed by the applicant). Please see the attached definitions. The term “new” is defined as “having been made or come into being only a short time ago; recent,”[1] and references the newly constructed homes and communities via the applicant’s goods and services. The term “home” is defined as “a place where one lives; a residence,”[2] and again references the newly constructed homes and communities via the applicant’s goods and services. The term “find” is defined as “to come upon after a search;”[3] while the term “finder” is defined as one that finds: a finder of great hidden treasure.”[4] The term “finder” is descriptive of the applicant itself (entity which finds new homes and lists the information) and the applicant’s “guides” and “information” which aids in and are used for client’s to find new homes and new home communities which meet their needs. Please additionally see the attached U.S. Registrations in which the terminology “HOMEFINDER” or “HOME FINDER” was disclaimed (or the mark was placed on the Supplemental Register in reference to real estate services, thus indicating the descriptiveness of the terminology.
The computerized printing format for the Trademark Official Gazette requires a standard form for a disclaimer. TMEP §1213.08(a)(i). A properly worded disclaimer should read as follows:
No claim is made to the exclusive right to use ^ apart from the mark as shown.
See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).
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 following cases explain the disclaimer requirement more fully: In re Kraft, Inc., 218 USPQ 571 (TTAB 1983); In re EBS Data Processing, Inc., 212 USPQ 964 (TTAB 1981); In re National Presto Industries, Inc., 197 USPQ 188 (TTAB 1977); In re Pendleton Tool Industries, Inc., 157 USPQ 114 (TTAB 1968).
Please additionally note that the applicant inadvertently characterized the date of use for services as “International Class 41” in the body of the application, but correctly characterizes the dates of use services (which will likely be International Class 36 as listed by the applicant) on the drawing page. Please clarify that the dates of use are correct for the services in International Class 36 (if accurate).
Please note that at least 1 specimen is required per international class. The specimens are currently acceptable for the real estate services listed in International Class 36. However, if the applicant adopts several international classes, then at least 1 specimen is required for each international class adopted. Examples of acceptable specimens for services are signs, photographs, brochures or advertisements that show the mark used in the sale or advertising of the services. TMEP §§1301.04 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.
No set form is required for response to this Office action. The applicant must respond to each point raised. The applicant should simply set forth the required changes or statements and request that the Office enter them. The applicant must sign the response. In addition to the identifying information required at the beginning of this letter, the applicant should provide a telephone number to speed up further processing.
PLEASE NOTE: All of the issues raised can be resolved by telephone. The applicant may telephone the examining attorney, instead of submitting a written response, to expedite the application.
Christopher Scott Adkins
Examining Attorney
Law Office xxx
(703) 308-91xx ext.xxx437
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
[1]The American Heritage® Dictionary of the English Language, Third Edition copyright © 1992 by Houghton Mifflin Company. Electronic version licensed from INSO Corporation; further reproduction and distribution restricted in accordance with the Copyright Law of the United States. All rights reserved.
[2]Id.
[3]Id.
[4]Id.