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  76/499107

 

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 EASYSTICK in typed capital letters for “roofing products, namely under layment for roofing materials.”

 

Page 2 of the specimen makes it clear the proposed mark describes desirable properties of the goods.  The applicant notes that the goods include “a self-adhering compound of high tack SBS modified asphalt protected by a release film for easy installation on the bottom side.”  Foremost among the applicant-designated “Features and Benefits” is this statement:  “No specific tools required.  Clean, easy to handle peel and stick self-adhering application.”

 

It is well settled that a term or phrase is considered to be merely descriptive of goods or services, within the meaning of Section 2(e)(1), if it immediately describes an ingredient, quality, characteristic or feature thereof  or if it directly conveys information regarding the nature, function, purpose or use of the goods or services.  See, In re Abcor Development Corp., 200 USPQ 215, 217-18 (CCPA 1978).  It is not necessary that a term or phrase describe all of the properties or functions of the goods or services in order for it to be considered to be merely descriptive thereof; rather, it is sufficient if the term or phrase describes a significant attribute or idea about them.  Moreover, whether a term or phrase is merely descriptive is determined not in the abstract but in relation to the goods or services for which registration is sought, the context in which it is being used on or in connection with those goods and services and the possible significance that the term or phrase would have to the average purchaser of the goods or services because of the manner of its use.  See, In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).

 

In the context created by the applicant for consumers to encounter the proposed mark, the fact that it directly describes an important installation feature is immediately evident.

 

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.

 

Significance

 

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

 

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.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

 

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.