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  76/490795

 

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

 

I.        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. §1052(d).  TMEP §704.02.

 

However, the applicant must address the following to enable further prosecution of the file.

 

II.       INFORMALITIES

 

A) The applicant must disclaim the descriptive wording “E PASS” 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 because it describes a feature of the relevant services.  It is well established that the letter “e” refers to “electronic”, and is commonly used to form words to refer to the publication or exchange of information in an electronic format, such as “e-mail”, “e-commerce” and “e-text”, and words relating to electronic financial transactions, such as “e-cash” and “e-money”.  The Oxford Dictionary of NEW WORDS  (1997).  (E-ticketing: Electronic ticketing. See ticketless travel. The Travel Dictionary (1998).  Ticketless travel: Also known as "electronic ticketing/E-ticketing, is the process by which passengers arrive at the airport without tickets or other formal documents to board flights. They present identification and a confirmation  number.  The Travel Dictionary  (1998); Continental Airlines Inc. v. United Air Lines Inc., 53 USPQ2d 1385 (TTAB 2000)(E-TICKET held generic for computerized airline reservation and ticketing services); In re Styleclick.com Inc., 57 USPQ2d 1445.  (TTAB 2000). E-FASHION held descriptive for software for use online and for electronic retailing services). See also In re SPX Corp., 63 USPQ2d 1592 (TTAB 2002). E-AUTODIAGNOSTICS held merely descriptive for electronic engine analysis system comprised hardware and software.

 

A properly worded disclaimer should read as follows:

 

            No claim is made to the exclusive right to use E PASS apart from the mark as shown.

Trademark Act Section 6(a), 15 U.S.C. §1056(a), permit the Office to require a disclaimer of an unregistrable component of a mark.  Trademark Act Section 2(e), 15 U.S.C. §1052(e), bars the registration of a mark which is merely descriptive or deceptively misdescriptive, or primarily geographically descriptive of the goods.  Therefore, the examining attorney may require the disclaimer of a portion of a mark which, when used in connection with the goods, is merely descriptive or deceptively misdescriptive, or primarily geographically descriptive.  If an applicant does not comply with a disclaimer requirement, the examining attorney may refuse registration of the entire mark.  TMEP §1213.01(b).

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.

B) The applicant must delete the “tm” from the drawing because it is not part of the mark.  TMEP §§807.04 and 807.15.

 

C)  The drawing is not acceptable because it will not reproduce satisfactorily.  The applicant must submit a new drawing showing the mark clearly and conforming to 37 C.F.R. §2.52.  TMEP §807.07(a).  The requirements for a special‑form drawing are as follows:

 

(1) The drawing must appear in black and white; no color is permitted.

 

(2)  Every line and letter must be black and clear.

 

(3)  The use of gray to indicate shading is unacceptable.

 

(4)  The lining must not be too fine or too close together.

 

(5)  The preferred size of the area in which the mark is displayed is 2½ inches (6.1 cm.) high and 2½ inches (6.1 cm.) wide.  It should not be larger than 4 inches (10.3 cm.) high or 4 inches (10.3 cm.) wide.

 

(6)  If the reduction of the mark to the required size renders any details illegible, the applicant may insert a statement in the application to describe the mark and these details.

 

37 C.F.R. §2.52; TMEP §§807.01(b) and 807.07(a).  The Office will enforce these drawing requirements strictly. 

 

The Office prefers that the drawing be depicted 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.  37 C.F.R. §2.52(b); TMEP §§807.01(a), 807.01(b), 807.01(c) and 807.07(a).

 

 

 

/Carolyn Pendleton Cataldo/

Trademark Attorney

Law Office 103

Phone:  (703) 308-9103 (ext. 222)

Facsimile:  (703) 746-8103

carolyn.pendleton@uspto.gov

 

 

 

FEE INCREASE

 

Effective January 1, 2003, the fee for filing an application for trademark registration will be increased to $335.00 per International Class.  The USPTO will not accord a filing date to applications that are filed on or after that date that are not accompanied by a minimum of $335.00. 

 

Additionally, the fee for amending an existing application to add an additional class or classes of goods/services will be $335.00 per class.                            

 

 

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.