UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/503286
APPLICANT: Hangsterfer's Laboratories, Inc.
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CORRESPONDENT ADDRESS: SIMOR L. MOSKOWITZ JACOBSON HOLMAN PLLC THE JENIFER BUILDING 400 SEVENTH STREET, N.W. WASHINGTON, D.C. 20004-2201 |
RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom110@uspto.gov
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MARK: VEGGIE COOL
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CORRESPONDENT’S REFERENCE/DOCKET NO: T33992US0
CORRESPONDENT EMAIL ADDRESS:
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Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 76/503286
The assigned trademark examining attorney has reviewed the referenced application and determined the following.
SEARCH TMEP §704.02 The trademark 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. Section 1052(d).
Section 2(e)(1) Refusal TMEP §§1209 et seq Registration is refused 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).
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 §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).
See attached evidence supporting descriptiveness
veg·gie also veg·ie (vèj¹ê) noun
Informal.
A vegetable.
cool·ant (k¡¹lent) noun
An agent that produces cooling, especially a fluid that draws off heat by circulating through an engine or by bathing a mechanical part.
The American Heritage® Dictionary of the English Language, Third Edition copyright © 1992 by Houghton Mifflin Company. Electronic version licensed from INSO Corporation; further reproduction and distribution restricted in accordance with the Copyright Law of the United States. All rights reserved.
Also attached evidence in support of descriptiveness.
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.
POTENTIAL MULTI-CLASS APPLICATION
The application identifies goods that may be classified in several international classes. Therefor, the applicant must either: (1) restrict the application to the number of class(es) covered by the fee already paid, or (2) pay the required fee for each additional class(es). 37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1401.04, 1401.04(b) and 1403.01.
If the applicant prosecutes this application as a combined, or multiple‑class, application, the applicant must comply with each of the following.
(1) The applicant must list the goods by international class with the classes listed in ascending numerical order. TMEP §1403.01.
(2) The applicant must submit a filing fee for each international class of goods/services not covered by the fee already paid. 37 C.F.R. §§2.6(a)(1) and 2.86(a); TMEP §§810.01 and 1403.01. The fee for filing a trademark application is $335 for each class.
IDENTIFICATION& CLASSIFICATION OF GOODS TMEP §1402.01
Applicant has submitted the following identification of goods ~ Metalworking fluids, lubricants, cutting oils and coolants.
The wording “Metalworking fluids” in the identification of goods is unacceptable as indefinite.
If accurate, the applicant may amend this wording to:
The wording “lubricants” in the identification of goods is unacceptable as indefinite.
For example, if accurate, the applicant may amend this wording to:
The wording “cutting oil” in the identification of goods is unacceptable as indefinite.
If accurate, the applicant may amend this wording to:
The wording “coolants” in the identification of goods is unacceptable as indefinite. If accurate, the applicant may amend this wording to:
Applicant should keep in mind not to list items twice
The applicant may wish to consult the on-line identification manual on the PTO homepage for
acceptable common names of goods and services.
http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/
37 C.F.R. Section 2.71(a); TMEP §1402.06 While an application may be amended to clarify or limit the identification, additions to the identification are not permitted. Therefor, the applicant may not amend to include any goods/services that are not within the scope of the goods/services recited in the present identification.
Intent to Use Application Please note that the mark in an application under Trademark Act Section 1(b), 15 U.S.C. §1051(b), is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use under 37 C.F.R. §2.76 or statement of use under 37 C.F.R. §2.88 has been timely filed. 37 C.F.R. §2.47(c); TMEP §815.02, 816.02 and 1102.03. When such an application is changed from the Principal Register to the Supplemental Register, the effective filing date of the application is the date of filing of the allegation of use. 37 C.F.R. §2.75(b); TMEP §§206.01 and 816.02.
/leb/ Linda E. Blohm, Trademark Examining Attorney
Ecom110@uspto.gov (the law office email address for OFFICIAL responses ONLY)
703.308.9110 ext.130, Law Office 110 Facsimile 703.746.8110
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.
For inquiries or questions about this office action, please contact the assigned examining attorney.