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  76/507972

 

The applicant’s claim of ownership of prior registrations has been entered into the record.

 

IDENTIFICATION OF GOODS

The requirement that the applicant clarify the identification of goods is repeated and made FINAL.

 

The applicant must clarify the identification of goods by listing the “digital media storage devices” by their common commercial names, e.g., tapes, compact discs.  TMEP §1402.01.  The applicant must clarify this language in both of the places where it appears in the identification.

 

The remainder of the identification is acceptable.

 

SECTION 2(E)(1) DESCRIPTIVENESS REFUSAL

Registration was previously refused under Section 2(e)(1).  That refusal is repeated and made FINAL.

 

As indicated in the previous office action, Top-level domains (TLDs), such as .COM, are generic locators for Internet website addresses and have no meaningful source identifying significance.  See CCBN.com Inc v. C-call.com Inc., 73 F.Supp.2d 106, 53 USPQ2d 1132, 1136 (D. Mass. 1999) (“[the] “.com” … suffix is not a relevant part of the mark, because “com” is a generic locator for domain names of web sites dedicated to commercial use”); Brookfield Communications, Inc., v. West Coast Entertain. Corp., 174 F.3d 1036, 50 USPQ2d 1545 (9^th Cir. 1999) (MOVIEBUFF.COM found to be essentially identical to MOVIEBUFF); Hard Rock Café Int’l v. Morton, 1999 WL 717995 (S.D.N.Y 1999).  Thus the TLD appearing in the applicant’s CLASSMATES.COM mark would be less significant in creating a commercial impression in the minds of consumers, and should be given little weight in comparing the respective marks.

 

The applicant makes reference to several Class 9 third party registrations which have registered and which have are comprised of the word CLASSMATE, CLASSMATES or CLASS MATE.  The applicant submits these registrations to support an argument that the PTO’s past practice indicates that “classmates” is not merely descriptive of Class 9 products.  Third‑party registrations are not conclusive on the question of descriptiveness.  The examining attorney must consider each case on its own merits.  A mark which is merely descriptive is not registrable merely because other similar marks appear on the register.  In re Scholastic Testing Service, Inc., 196 USPQ 517 (TTAB 1977).  TMEP §1209.03(a). 

 

Also, the applicant’s goods are different from the goods listed in the referenced registrations.  The examining attorney must consider whether a mark is merely descriptive in relation to the identified goods/services, 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 (C.C.P.A. 1978); In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985); In re American Greetings Corp., 226 USPQ 365 (TTAB 1985).  TMEP §1209.01(b). 

 

The referenced goods all seem to be used as educational or school tools.  The wording CLASSMATE, CLASSMATES and CLASS MATE in these registrations seems to suggest that the goods are mates or helpmates in the classroom.  The mark CLASSMATES.COM when used on the applicant’s goods seemingly describes or identifies the subject matter of the recordings. 

 

The Trademark Trial and Appeal Board and the Courts have consistently held that marks which describe the subject matter of publications are merely descriptive under Section 2(e)(1).  In re National Recreation Association, Inc., 181 F.2d 221, 85 USPQ 281 (C.C.P.A. 1950) (THE PLAYGROUND descriptive of magazine); Sterling House, Inc. v. Dell Publishing Co., Inc., 174 USPQ 299 (S.D.N.Y. 1972) (DAYTIME TV descriptive of a magazine); Field Enterprises Educational Corp. v. Cove Industries, Inc., 297 F. Supp. 989, 161 USPQ 243 (E.D.N.Y. 1969) (WORLD BOOK descriptive of encyclopedia); In re Oriental Daily News, Inc., 230 USPQ 637 (TTAB 1986) (Chinese characters meaning ORIENTAL DAILY NEWS descriptive of newspaper).

 

The Trademark Trial and Appeal Board and the Courts have also consistently held that marks which describes the subject matter of  television programs are merely descriptive under Section 2(e)(1).  See e.g., In re Conus Communications Co., 23 USPQ2d 1717 (TTAB 1992) (ALL NEWS CHANNEL generic for a television channel broadcasting all news); In re Weather Channel, Inc., 229 USPQ 854 (TTAB 1986) (WEATHER CHANNEL merely descriptive of television program).

 

By way of analogy, the subject matter of audio and visual recordings, is similar to the subject matter of a magazine or television program and would be descriptive as well.

 

The applicant’s goods are identified as “Audio recordings, namely, pre-recorded audio cassettes, audio tapes, and compact discs, lash memory cards, and digital media storage devices featuring music and spoken word; audiovisual recordings, namely pre-recorded videotapes, laser discs, DVD’s, flash memory cards, and digital media storage devices featuring comedy, variety, drama and documentary television programs and motion pictures.”

 

The applicant’s identification of goods is broad enough to recordings which include television programs and movies which feature former classmates or which include spoken recordings by former classmates.

 

The determination of whether a mark is merely descriptive is considered in relation to the identified goods and/or services, not in the abstract.  In re Polo International Inc., 51 USPQ2d 1061 (TTAB 1999) (Board found that DOC in DOC-CONTROL would be understood to refer to the “documents” managed by applicant’s software, not “doctor” as shown in dictionary definition); In re Digital Research Inc., 4 USPQ2d 1242 (TTAB 1987) (CONCURRENT PC-DOS found merely descriptive of “computer programs recorded on disk;” it is unnecessary that programs actually run “concurrently,” as long as relevant trade clearly uses the denomination “concurrent” as a descriptor of this particular type of operating system); In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985); In re American Greetings Corp., 226 USPQ 365, 366 (TTAB 1985) (“Whether consumers could guess what the product is from consideration of the mark alone is not the test”); TMEP §1209.01(b).

 

Even if only some of the programs or recordings feature classmates or information about classmates, the term classmates is still descriptive when applied to different types of recordings featuring television programs or movies or information if some of the programming and information features classmates.

 

A term need not describe all of the purposes, functions, characteristics or features of the goods and/or services to be merely descriptive.  For the purpose of a Section 2(e)(1) analysis, it is sufficient that the term describe only one attribute of the goods and/or services to be found merely descriptive.  In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973); TMEP §1209.01(b).

 

The attached evidence from the applicant’s website, from the website of the program distributor and from an article on a news website located in Seattle, shows that the applicant’s television shows include story lines featuring classmates. 

 

The use of the mark CLASSMATES.COM on audio and audiovisual recordings where the recordings include television programs which feature classmates or other recordings by or information about classmates immediately conveys this feature or characteristic of the goods and is therefore descriptive under Section 2(e)(1) of the Trademark Act.  The refusal to register the mark is made FINAL.

 

If applicant fails to respond to this final action within six months of the mailing date, the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond to this final action by: 

 

(1)   submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); and/or

(2)   filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).

 

In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2).  37 C.F.R. §2.64(a).  See 37 C.F.R.

 

 

Kelley L. Wells

Examining Attorney

Law Office 105

(703) 308-9105x124

 

 

 

 

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.