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  76/486847

 

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

 

Statutory Refusal

 

The examining attorney refuses registration on the Principal Register because the proposed mark merely describes the goods.  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.  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 mark CLEAN STAGING SYSTEM is deemed descriptive because the combination of the wording add nothing but the ordinary meaning of the terms to the mark. See below for pertinent dictionary definitions.   Clean staging appears to refer to applicant’s self contained systems that operate storage platforms for clean rooms.

 

clean room

 
clean room noun

A room that is maintained virtually free of contaminants, such as dust or bacteria, used in laboratory work and in the production of precision parts for electronic or aerospace equipment. Also called white room.[1]

stag·ing

 
stag·ing (stâ¹jîng) noun

1.    A temporary platform or system of platforms used for support; scaffolding.

2.    The process or manner of putting on a play on the stage.

3.    The act of jettisoning a stage of a multistage rocket.

4.                        a. The operation of stagecoaches as an enterprise. b. Travel by stagecoach.[2]

 

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

 

If the mark is determined to be otherwise registrable, the applicant must still disclaim the following unregistrable matter.

 

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 SYSTEM apart from the mark as shown.

 

The term “system” is generic as stated in the identification of goods.

 

sys·tem

 
sys·tem (sîs¹tem) noun

Abbr. syst.

1.    A group of interacting, interrelated, or interdependent elements forming a complex whole.

2.                        A functionally related group of elements, especially:. a. The human body regarded as a functional physiological unit. b. An organism as a whole, especially with regard to its vital processes or functions. c. A group of physiologically or anatomically complementary organs or parts: the nervous system; the skeletal system. d. A group of interacting mechanical or electrical components.[3]

 

The nature of the goods is not clear from the present record.  In order to allow proper identification and classification of the goods on which the applicant intends to use the mark, the applicant must submit samples of advertisements or promotional materials for goods of the same type.  If such materials are not available, the applicant must submit a photograph of similar goods and must describe the nature, purpose and channels of trade of the goods on which the applicant has asserted a bona fide intent to use the mark.  37 C.F.R. §2.61(b); TMEP §§814 and 1402.01(d).

 

Identification of Goods

 

The identification of goods is unacceptable as indefinite.  The applicant may adopt the following identification, if accurate:  Automated warehouses and storage units for use in clean rooms, namely, racks, sorting and retrieving machines, and their controllers, sold as a unit.  TMEP §1402.01.

 

Significance

 

The applicant must indicate whether the wording “CLEAN STAGING” has any significance in the relevant trade or industry or as applied to the goods.  37 C.F.R. §2.61(b).

 

Search Statement

 

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.

 

Further action awaits response to the above.

 

 

 

 

/Raul Cordova/

Trademark Examining Attorney

Law Office 114

703-308-9114 ext. 136

Rightfax 703-746-6429

 

 

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.