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  76/488604

 

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

 

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.

 

I.          Merely Descriptive – Section 2(e)(1)

 

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. Section 1052(e)(1); TMEP section 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 section 1209.01(b).

 

In the present case, applicant intends to use the mark MULTISENSORIAL DESIGN in connection with “medical apparatus and machines for rehabilitation and for medical, muscular, aerobic and cardiovascular check-ups through physical exercises, namely, treadmills, step simulators, rowing machines and exercise bicycles” and “machines and equipment for physical and gymnastic exercises, for muscle training, and for aerobic and cardiovascular exercise, namely, treadmills, step simulators, rowing machines, cycle simulators, barbells, dumbbells and exercise weights.”  The word MULTISENSORIAL, however, is defined as “Relating to or involving several bodily senses.”  See the enclosed definition from The American Heritage Dictionary of the English Language (1992).  The word DESIGN is defined as “The purposeful or inventive arrangement of parts or details.”  See the enclosed definition from American Heritage.  The term MULTISENSORIAL DESIGN, then, when considered in connection with the goods at issue, would be perceived by consumers as nothing more than a description of rehabilitation and exercise equipment whose parts are arranged so as to relate to several bodily senses.  As this describes a characteristic of applicant’s goods, the mark must be deemed to be merely descriptive.

 

If, in the alternative, applicant’s goods do not involve rehabilitation and exercise equipment whose parts are arranged so as to relate to several bodily senses, the examining attorney nevertheless refuses registration on the Principal Register because the mark is deceptively misdescriptive of the goods.  Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1); TMEP section 1209.03.

 

A mark is descriptive if it conveys an accurate or true idea of an ingredient, quality, characteristic, function or feature of the relevant goods.  If the idea conveyed by the mark is false, and also plausible, then the term is deceptively misdescriptive and is unregistrable under Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1).  In re Woodward & Lothrop Inc., 4 USPQ2d 1412 (TTAB 1987); In re Ox‑Yoke Originals, Inc., 222 USPQ 352 (TTAB 1983).

 

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

 

II.                 Informality

 

The applicant has filed asserting a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), 15 U.S.C. §1051(b), and claiming priority under Section 44(d), 15 U.S.C. §1126(d), based on a foreign application.  Under these circumstances, the applicant may rely solely on its intent to use the mark in commerce as the basis for registration and not the expected foreign registration, and still claim the benefit of the priority filing date.  If the applicant chooses to do so, this Office will approve the case for publication without waiting for the applicant to submit the foreign registration.  Of course, the application must be in condition for publication in all other respects.  Moreover, while the application may be approved for publication, the mark will not be registered until an acceptable allegation of use has been filed.

 

If the applicant wishes to proceed relying on the applicant’s intent to use the mark in commerce as the sole basis for registration, with the claim of priority, the applicant should so advise the examining attorney.  TMEP §§806.02(f) and 806.04(b).

 

If the applicant does not so indicate, this Office will presume that the applicant wishes to rely on the foreign registration as an additional basis for registration and will expect the applicant to submit a true copy, a photocopy, a certification, or a certified copy of the foreign registration and, if appropriate, an English translation.  It is customary for the translator to sign the translation.  TMEP §§1004.01 and 1004.01(b).

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

 

/Barney L. Charlon/

Trademark Examining Attorney

Law Office 105

(703) 308-9105 ext. 130

 

 

mul·ti·sen·so·ry (mùl¹tî-sèn´se-rê) adjective

Relating to or involving several bodily senses: multisensory methods of reading instruction.[1]

de·sign (dî-zìn¹) verb

de·signed, de·sign·ing, de·signs verb, transitive

1.    a. To conceive or fashion in the mind; invent: design a good excuse for not attending the conference. b. To formulate a plan for; devise: designed a marketing strategy for the new product.

2.    To plan out in systematic, usually graphic form: design a building; design a computer program.

3.    To create or contrive for a particular purpose or effect: a game designed to appeal to all ages.

4.    To have as a goal or purpose; intend.

5.    To create or execute in an artistic or highly skilled manner.

 

verb, intransitive

1.    To make or execute plans.

2.    To have a goal or purpose in mind.

3.                        To create designs.[2]

noun

1.    a. A drawing or sketch. b. A graphic representation, especially a detailed plan for construction or manufacture.

2.    The purposeful or inventive arrangement of parts or details: the aerodynamic design of an automobile; furniture of simple but elegant design.

3.    The art or practice of designing or making designs.

4.    Something designed, especially a decorative or an artistic work.

5.    An ornamental pattern. See synonyms at figure.

6.    A basic scheme or pattern that affects and controls function or development: the overall design of an epic poem.

7.    A plan; a project. See synonyms at plan.

8.                        a. A reasoned purpose; an intent: It was her design to set up practice on her own as soon as she was qualified. b. Deliberate intention: He became a photographer more by accident than by design.[3]

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.