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  76/495924

 

This is responsive to the communication received January 20, 2004.

 

REFUSAL BECAUSE THE MARK IS MERELY DESCRIPTIVE AS APPLIED TO THE GOODS MADE FINAL

 

Registration was refused under Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1), because the subject matter for which registration is sought is merely descriptive of the identified goods.

 

The examining attorney has considered the applicant's arguments carefully but has found them unpersuasive.  For the reasons below, the refusal under Section 2(e)(1) is maintained and made FINAL.

 

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).

 

The examining attorney must consider whether a mark is merely descriptive in relation to the identified goods, not in the abstract.  In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978); In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985).

 

The mark in question is not a highly-stylized logo mark.  Neither the stylization, nor the color of the proposed mark make it inherently distinctive. The central issue is whether the design of applicant's mark is inherently distinctive. do not view applicant's design as making a striking commercial impression. Indeed, applicant's basic block design is even less distinctive than the script that the CCPA found registrable on the Supplemental Register in In re Wella Corp., 196 USPQ 7 (CCPA 1977).

 
The next question is whether the lining for the colors blue, orange, and magenta results in an non-inherently distinctive mark becoming inherently distinctive. It has generally been held over the years that the distinctive display of descriptive or otherwise unregistrable components of a mark cannot bestow registrability upon the mark as a whole unless the features are of such a nature that they undoubtedly would serve to distinguish the mark in its entirety in the applicable field or it can be shown through competent evidence that the unitary mark as a whole displayed in the asserted distinctive manner does in fact create a distinctive commercial impression separate and apart from and above the descriptive significance of its components.

It is certainly common for trademark owners to display their marks in a variety of different ways. See, e.g., In re Northland Aluminum Products, Inc., 227 USPQ 961 (Fed. Cir. 1985) (Court agreed with Board that lettering of BUNDT mark does not create a commercial impression separate and apart from the term); United States Lines, Inc. v. American President Lines, Ltd., 219 USPQ 1224 (TTAB 1982). (Applicant's THRUSERVICE mark with stylized "S" is not inherently distinctive); In re Couriare Express International, Inc., 222 USPQ 365 (TTAB 1984) (Slightly slanted letters and capitalization of the letters "C" and "A" in COURIAIRE not distinctive); In re Miller Brewing Co., 226 USPQ 666 (TTAB 1985) (Stylized mark LITE not inherently distinctive; evidence of acquired distinctiveness persuasive); In re S.D. Fabrics, Inc., 223 USPQ 54 (TTAB 1985) (Filling in some of the letters with shading and presenting the mark as "designers/fabric" are not so distinctive as to create a commercial impression separate and apart from the unregistrable components; In re Anchor Hocking Corp., 223 USPQ 85 (TTAB 1984) (Stylization is completely ordinary and nondistinctive); In re Geo. A. Hormel & Co., 227 USPQ 813 (TTAB 1985) (Applicant's stylized script "plainly not inherently distinctive"); and In re Guilford Mills Inc., 33 USPQ2d 1042 (TTAB 1994) (Board rejected applicant's argument that interlocking letters in its mark “cleverly suggest” applicant’s goods).

Here, applicant's presentation of its mark is in an unremarkable block style. The only feature not entirely ordinary about its block letters is the fact that they are shown in three different colors. We can hardly conclude that this feature creates such an impression that it would convert a non-registrable term into an inherently distinctive one. "The important point is, of course, the effect the display is likely to have on the prospective purchaser of the goods." Couriare, 222 USPQ at 366. The display here is not unlike other designs that have been held to lack inherent distinctiveness. Potential consumers are unlikely to see slight changes in the presentation of the mark such as shading, lack of capitalization, and the addition of a slash (S.D. Fabrics); the display of the mark with flames (Behre); or the use of interlocking letters (Guilford Mills), as creating an inherently distinctive mark. We conclude that similarly applicant's mark would not create a distinctive

Commercial impression.

It is not necessary that a term describe all of the purposes, functions, characteristics or features of the goods to be merely descriptive.  It is enough if the term describes one attribute of the goods.  In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973).

 

A mark which combines descriptive terms is not registrable where, as here, the composite does not create a unitary mark with a separate, nondescriptive meaning. 

 

The fact that a term is not found in the dictionary is not controlling on the question of registrability.  In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987);  In re Orleans Wines, Ltd., 196 USPQ 516 (TTAB 1977).

 

The fact that an applicant may be the first and only user of a merely descriptive or generic designation does not justify registration if the term is merely descriptive.  In re National Shooting Sports Foundation, Inc., 219 USPQ 1018 (TTAB 1983).

 

The examining attorney must consider descriptiveness in relation to the relevant goods or services.  The fact that a term may have different meanings in another context is not controlling on the question of descriptiveness.  In re Bright‑Crest, Ltd., 204 USPQ 591 (TTAB 1979).

 

As with all trademarks, a color mark may contain only those elements that make a separable commercial impression. See TMEP Sec. 807.14(b) Accordingly, an applicant may not seek to register the color of the wording or design apart from the words or designs themselves if the color does not create a separate commercial impression. For example, an applicant may not register the color of words that make up its mark apart from the words themselves, if the color does not create a separate commercial impression apart from the words. However, the applicant may register the color of the background material on which the words or design appear apart from the words or design. See TMEP Sec. 1202.11

 

A disclaimer will not render the mark registrable.  An entire mark may not be disclaimed. If a mark is not registrable as a whole, a disclaimer will not make it registrable. There must be something in the combination of elements in the mark, or something of sufficient substance or distinctiveness over and above the matter being disclaimed, which would make the composite registrable after the import of the disclaimer is taken into account. See In re Anchor Hocking Corp., 223 USPQ 85 (TTAB 1984); Ex parte Ste. Pierre Smirnoff Fls, Inc., 102 USPQ 415 (Comm’r Pats. 1954).

 

 

/Robert Clark/

Trademark Attorney

Law Office 108

703-308-9108 ext. 162

Fax: 703-746-8108

 

 

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 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.