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  76/489806

 

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

 

Search results

 

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 refused - merely descriptive mark

 

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 or 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 ENPU for “semiconductor chips used in telecommunications equipment.”

 

As shown in the attached excerpted entries from the Computer Desktop Encyclopedia, an NPU is a specialized chip.  The “E” to which the applicant proposes to join this descriptor is meaningful itself.  It has emerged as shorthand for “electronic” and the Trademark Trial and Appeal Board has found it is descriptive when used in marks with other terms.  See In re SPX Corporation, 63 USPQ2d 1592 (TTAB, 2002).  Given the clarity of the meaning of the constituent terms, which is emphasized by the use of lower case and upper case letters, the prospective purchasers for the units will understand that ENPU designates an electronically programmable processing unit.

 

Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.  If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following matters.  Resolution of the below mentioned informalities is essential but is not, alone, sufficient to overcome the foregoing refusal.

 

Drawing

 

The drawing is not acceptable because the mark is not typed entirely in capital letters.  37 C.F.R. §2.52(a)(1); TMEP §807.06.  If the applicant wishes to register the typed version of the mark, the applicant must submit a new drawing on which the mark is typed entirely in capital letters.  The requirements appear below.

 

Alternatively, if the applicant intends to register the mark in special form, the applicant must submit an acceptable special‑form drawing.  37 C.F.R. §2.52.  (Since the current drawing is acceptable for that purpose if the applicant is seeking to register the mark in the form in which it appears on the drawing page, the applicant need only specifically so indicate.)

 

The requirements for a typed drawing are as follows:

 

The Office prefers that the drawing be typed on a separate sheet of smooth, nonshiny, white paper 8 to 8½ inches (20.3 to 21.6 cm.) wide and 11 inches (27.9 cm.) long, and that the sheet contain a heading listing, on separate lines, the applicant’s complete name; the applicant’s address; the goods or services recited in the application; and, if the application is filed under Section 1(a) of the Act, the dates of first use of the mark and of first use of the mark in commerce; or, if the application is filed under Section 44(d), the priority filing date of the foreign application.

 

The mark must be typed entirely in capital letters, without spaces between the letters.  37 C.F.R. §2.52; TMEP §§807.01(a), 807.01(b), 807.01(c) and 807.06.

 

Requirement for information

 

1.  The examining attorney requires information about the goods to determine whether the proposed mark is merely descriptive as applied to the goods.  TMEP §§814 and 1402.01(d).  The applicant must provide product information for the goods.  This may take the form of a fact sheet, instruction manual, or advertisement.  If unavailable, the applicant should submit comparable information for goods of the same type, explaining how its own product will differ.  If the goods feature new technology and no competing goods are available, the applicant must provide a detailed factual description of the goods.

 

In all cases, the submitted factual information must make clear how the goods do or will operate, their salient features, and the prospective customer base and/or channel of trade.  This information is not readily available to the examining attorney, and is pertinent to the descriptiveness determination.  Conclusory statements from the applicant or its attorney regarding the descriptiveness standard will not be sufficient to meet this requirement for information.

 

Trademark Rule 2.61(b) states "The examiner may require the applicant to furnish such information and exhibits as may be reasonably necessary to the proper examination of the application".  The Trademark Trial and Appeal Board has upheld a refusal of registration based on the applicant's failure to provide information requested under this rule.  In re Babies Beat Inc., 13 USPQ2d 1729 (TTAB 1990)(failure to submit patent information regarding configuration);  In re Page, 51 USPQ2d 1660, 1665 (TTAB 1999)(information concerning planned use of proposed mark).

 

2.  Additionally, the applicant must indicate whether the proposed mark has any meaning in relation to the goods and must provide the meaning when it has one.  37 C.F.R. Section 2.61(b); TMEP §1209.02; In re Page, supra.

 

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

/Melvin T. Axilbund/

Melvin T. Axilbund

Examining Attorney, Law Office 113

ecom113@uspto.gov

703/308-9113 extension 196

 

How to respond to this Office Action:

 

To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.uspto.gov/teas/index.html and follow the instructions.

 

To respond formally via E-mail, visit http://www.uspto.gov/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.uspto.gov/

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.uspto.gov/main/trademarks.htm

 

Fee Increase Now in Effect

Effective January 1, 2003, the fee for filing an application for trademark registration increased to $335 per International Class.  The United States Patent and Trademark Office will not accord a filing date to applications filed on or after that date that are not accompanied by a minimum of $335. 

 

At the same time, the fee for amending an existing application to add an additional class or classes of goods or services became $335 per class added.