Reconsideration Letter

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

Serial Number 76/507972

 

Applicant is requesting reconsideration of a final refusal dated June 29, 2004.

 

The applicant’s amended identification is acceptable and the Final refusal in regard to the identification is withdrawn.

 

However, after careful consideration of the law and facts of the case, the examining attorney must deny the request for reconsideration in regard to the Section 2(e)(1) refusal and adhere to the final action as written since no new facts or reasons have been presented that are significant and compelling with regard to the point at issue.

 

Accordingly, applicant’s request for reconsideration is denied.  The time for appeal runs from the date the final action was mailed.  37 C.F.R. Section 2.64(b); TMEP Section 715.03(c).

 

SECTION 2(E)(1) DESCRIPTIVENESS REFUSAL

The finality of the previously issued section 2(e)(1) refusal is maintained.

 

The applicant argues that its CLASSMATES.COM mark is not descriptive of the Applicant's products, their functions or features.

 

However, it is very clear from the previously submitted evidence and from the additional evidence submitted here that classmates are in fact one of the subject matters of the applicant’s products.  The applicant’s identification of goods includes pre-recorded videotapes, laser discs, DVDs, flash memory cards, digital storage media featuring comedy, variety, drama and documentary television programs.  It is clear from the evidence that the applicant’s television programs include television programs about former classmates. 

 

Classmates are a feature of the applicant’s products because they are a subject matter of the products.

 

Even if classmates are only one of the subjects featured in the applicant’s products and the applicant’s products feature subject matter other than 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 dictionary definition evidence found on a search at www.onelook.com shows that CLASSMATES are people who are or were in the same class at school.

 

Descriptiveness is considered in relation to the relevant goods and/or services.  The fact that a term may have different meanings in other contexts is not controlling on the question of descriptiveness.  In re Chopper Industries, 222 USPQ 258 (TTAB 1984); In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979); In re Champion International Corp., 183 USPQ 318 (TTAB 1974); TMEP §1209.03(e).

 

The fact that CLASS may have a number of meanings is not controlling when it is clear from the evidence that the subject matter of the applicant’s television programs and other related services, such as the services in the applicant’s claimed registrations, does include people who were in the same class at school, or classmates.

 

The applicant has offered third party registrations to show that marks which suggest the subject matter or content or recordings have been allowed to register.  Third-party registrations are not conclusive on the question of descriptiveness.  Each case must be considered on its own merits.  A proposed mark that is merely descriptive does not become registrable simply because other similar marks appear on the register.  In re Scholastic Testing Service, Inc., 196 USPQ 517 (TTAB 1977); TMEP §1209.03(a).

 

It should also be noted that in the applicant’s prior registrations where the subject matter of the websites was classmates and the information provided through the applicant’s services was about classmates, the term classmates was found to be descriptive and was only registered with a section 2(f) claim of acquired distinctiveness.  The applicant has acknowledged or it was determined that in these prior registrations the term classmates was descriptive and registrable only with this showing of acquired distinctiveness when the subject matter of the applicant’s services was classmates.

 

In this case it is clear from the evidence of record that the subject matter of the applicant’s various services includes classmates and it is presumable that if the applicant is offering copies of its television programs or other media items via media recordings that those recording would feature classmates.  The term when used in association with the applicant’s identified goods immediately conveys to the customer that the subject matter of the various recordings includes or features classmates.  The mark CLASSMATES is descriptive under section 2(e)(1) of the Trademark Act and the Finality of the previous office action issuing the refusal is maintained.

 

This application will be remanded to the Board so that action on the appeal can be removed from suspension and the appeal proceedings can be resumed.

 

NOTICE:  FEE CHANGE   

 

Effective January 31, 2005 and pursuant to the Consolidated Appropriations Act, 2005, Pub. L. 108-447, the following are the fees that will be charged for filing a trademark application:

 

(1) $325 per international class if filed electronically using the Trademark Electronic Application System (TEAS); or 

 

(2)   $375 per international class if filed on paper

 

These fees will be charged not only when a new application is filed, but also when payments are made to add classes to an existing application. If such payments are submitted with a TEAS response, the fee will be  $325 per class, and if such payments are made with a paper response, the fee will be $375 per class.

 

The new fee requirements will apply to any fees filed on or after January 31, 2005.

 

NOTICE:  TRADEMARK OPERATION RELOCATION

 

The Trademark Operation has relocated to Alexandria, Virginia.  Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:

 

Commissioner for Trademarks

P.O. Box 1451

Alexandria, VA  22313-1451

 

Applicants, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at http://www.gov.uspto.report/teas/index.html.

 

 

 

/Kelley L. Wells/

Kelley L. Wells

Trademark Attorney

Law Office 105

571-272-9312