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  76/511210

 

The assigned examining attorney has reviewed the referenced application and determined the following.

 

Search

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. Section 1052(d).  TMEP section 1105.01.

 

Mark is Merely Descriptive

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. Section 1052(e)(1); TMEP section 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.  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 1209.03.

 

The applicant applied to register the mark PUSH TO CONFERENCE for computer hardware, computer software and telecommunications type hardware for conferencing.  A user pushes a button or other device or icon in order to conference, therefore, the mark describes a feature of the goods.  The applicant has disclaimed PUSH and CONERENCE, which is nearly the entire mark and which is not acceptable—the entire mark is descriptive.

 

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 informalities.

 

Significance of Term

The applicant must indicate what significance the wording "push to conference" and “push” have in the relevant trade or industry or as applied to the goods.  Applicant must state what is pushed in order to conference.  37 C.F.R. Section 2.61(b).

 

Prior Registration

The applicant should delete its prior registration claim because none of the referenced registration has a similar mark to the instant mark. 37 C.F.R. Section 2.36; TMEP section 812.

 

Date of Signing of Declaration

The applicant must indicate the date the application declaration was signed.  TMEP sections 202 and 804.01(b).

 

Identification of Goods

The identification of goods is unacceptable as indefinite and overly broad.  The applicant must amend the identification to specify the commercial name of the goods.  If there is no common commercial name for the product, the applicant must describe the product and its intended uses. TMEP section 1402.

 

The applicant may adopt the following identification if accurate:

 

            Computer hardware and software for facilitating teleconferencing, for telecommunications gateway applications, namely, audio conferencing via local area networks, a global computer network and wireless networks and services, for audio and video streaming, data collaboration and database integration, for web-based collaboration, and for [specify the function eg, for transmitting voice data in ] interactive voice response applications; teleconferencing systems, namely, [specify the common name eg. Computers for use by telephone operators, modems which act as operators in switching wireless calls], electric telephone switches, [specify type, eg. Electric circuit bridges], computer interface boards, ISDN integrated circuits, Ethernet interface cards, electrical power supplies, routers, and [specify the type, eg. Electric computer controls]; integrated management and teleconferencing software for managing conference calls, in International Class 9.

 

Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. Section 2.71(b); TMEP section 1402.06.  Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.  If the applicant has questions regarding the status of the application, the applicant should telephone the status line at 703-305-8747.

 

Fee increase effective January 1, 2003

Effective January 1, 2003, the fee for filing an application for trademark registration will be increased to $335.00 per International Class.  The USPTO will not accord a filing date to applications that are filed on or after that date that are not accompanied by a minimum of $335.00. 

 

Additionally, the fee for amending an existing application to add an additional class or classes of goods/services will be $335.00 per class for classes added on or after January 1, 2003.

 

 

 

/Rebecca L. Gilbert/

Trademark Attorney

Law Office 113

703-308-9113 ext 419

ecom113@uspto.gov

 

 

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

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.