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  76/511791

 

 

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

 

Refusal - Descriptiveness of the 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. 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 1209.01(b).

 

Applicant has requested registration of  the mark LABSCREEN for diagnostic chemicals used in medical laboratory test procedures.  The applicant’s mark is comprised of the terms LAB and SCREEN, telescoped together.  LAB is short for “laboratory”, which refers to the place wherein the goods are intended for use, as evidenced by the identification of goods.  SCREEN refers to testing for disease or infection. See attached definitions from The American Heritage â Dictionary of the English Language, Third Edition copyright ã 1992 establishing the common meanings of LAB and SCREEN.  The individual terms of the applicant’s mark are descriptive.  The combination of the terms does not create a separate commercial impression sufficient to obviate a refusal under Trademark Act Section 2(e)(1).  The mark merely conveys the purpose of the goods to consumers: laboratory testing.

 

 

For the foregoing reasons, the examining attorney refuses registration under Trademark Act Section 2(e)(1).

 

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.

 

Descriptive Marks Registrable Under 2(f)

 

An applicant may register a descriptive mark under Trademark Act Section 2(f), 15 U.S.C. Section 1052(f), by establishing acquired distinctiveness.  The applicant may present any of the following to establish distinctiveness.

 

(1) The applicant may rely on a claim of ownership of one or more prior registrations on the Principal Register for a mark which is the same as the mark in this application for the same or related goods.  37 C.F.R. Section 2.41(b); TMEP section 1212.04.  The applicant’s Supplemental Registration No. 2730892 is not a basis for a claim of acquired distinctiveness.

 

(2) The applicant may provide a statement that the mark has become distinctive of the applicant's goods and services by reason of substantially exclusive and continuous use in commerce by the applicant for the five years next preceding the date of the statement.  The applicant must verify this statement with an affidavit or a declaration under 37 C.F.R. Section 2.20.  37 C.F.R. Section 2.41(b); TMEP section 1212.05.  The applicant is uneligible to claim acquired distinctiveness on this basis because it has not used its mark for five years.

 

 (3) The applicant may submit actual evidence of acquired distinctiveness.  37 C.F.R. Section 2.41(a); TMEP section 1212.06.  The examining attorney will make a determination of a claim of acquired distinctiveness based upon the weight of any evidence provided by the applicant.  The application may ultimately be refused for descriptiveness even if the applicant claims acquired distinctiveness on the basis of actual evidence.

 

 

If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informalities.

 

Request For Information

 

The applicant should provide the following information to permit the examining attorney to reach an informed final determination concerning the proposed mark: The identification of goods lists: diagnostic chemicals used in medical laboratory test procedures.  The specimens of record indicate, however, that the goods are “Not for use in diagnostic procedures”.  The applicant must explain this apparent inconsistency.

 

The applicant should also provide any available advertising, promotional or explanatory material concerning the goods and/or services. If no such explanatory or promotional material is available, the applicant should provide the information for competitors’ goods and/or services. The applicant may also furnish any other evidence the applicant considers relevant to the registrability of the proposed mark.  In re Teledyne Industries, Inc., 696 F.2d 968, 217 USPQ 9 (Fed. Cir. 1982); 37 C.F.R. Section 2.61(b). TMEP §§814 and 1402.01(d).

 

 

 

 

 

 

/Tracy Whittaker-Brown/

Examining Attorney, Law Office 111

U.S. Patent & Trademark Office

Phone: (703) 308-9111, ext. 468

Fax:  (703) 308-7191

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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.

lab

 
lab (làb) noun

A laboratory.[1]

 

screen

 
screen (skrên) noun

1.    A movable device, especially a framed construction such as a room divider or a decorative panel, designed to divide, conceal, or protect.

2.    One that serves to protect, conceal, or divide: Security guards formed a screen around the President. A screen of evergreens afforded privacy from our neighbors.

3.    A coarse sieve used for sifting out fine particles, as of sand, gravel, or coal.

4.    A system for preliminary appraisal and selection of personnel as to their suitability for particular jobs.

5.    A window or door insertion of framed wire or plastic mesh used to keep out insects and permit airflow.

6.    a. The white or silver surface on which a picture is projected for viewing. b. The movie industry: a star of stage and screen. Also called silver screen.

7.    a. Electronics. The phosphorescent surface on which an image is displayed, as on a television, computer monitor, or radar receiver. b. Computer Science. The information or image displayed at a given time on a monitor, display, or video terminal: printing a hard copy of the screen.

8.    Electronics. The electrode placed between the anode and the control grid in a tetrode valve. Also called screen grid.

9.    Printing. A glass plate marked off with crossing lines, placed before the lens of a camera when photographing for halftone reproduction.

10.  A body of troops or ships sent in advance of or surrounding a larger body to protect or warn of attack.

11.  a. Sports. A block, set with the body, that impedes the vision or movement of an opponent. b. Football. A screen pass.

 

verb, transitive

screened, screen·ing, screens

1.    To provide with a screen: screen a porch.

2.    a. To conceal from view with or as if with a screen. See synonyms at block. hide1. b. To protect, guard, or shield.

3.    a. To separate or sift out (fine particles of sand, for example) by means of a sieve or screen. b. To examine (a job applicant, for example) systematically in order to determine suitability.

4.    To show or project (a movie, for example) on a screen.

5.    To test or examine for the presence of disease or infection: screen blood for the presence of a virus; screen patients in an epidemic zone.

6.    Sports. a. To block the vision or movement of (an opponent) with the body. b. To obscure an opponent's view of (a shot) by positioning oneself between the opponent and the shooter.

 [Middle English screne, from Old North French escren, from Middle Dutch scherm, shield, screen.]

— screen¹a·ble adjective

— screen¹er noun[2]