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  76/514203

 

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

 

Search Results

 

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. §1052(d).  TMEP §704.02.  However, registration must be refused for the following reason.

 

Section 2(e)(1) - Descriptive Refusal

 

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 §1209.01(b).

 

The applicant applied to register the mark 2 IN 1 for “pet toys.” 

 

The applicant’s mark is merely descriptive because it immediately conveys to prospective consumers a feature of the goods, namely, pet toys that have two major components, or consists of a combination of two products.  In this case, the applicant has merely combined two descriptive terms for their descriptive meaning.  Please see the attached evidence from the internet which indicates that the phrase “2 in 1” or “two in one” is commonly used to refer to goods which combine two products in one.  Additionally, please see the attachments which indicate that the wording “2 in 1” or “two in one” is frequently used in reference to pet products which have two major components or functions, or combine two products in one. 

 

Accordingly, the mark is refused registration on the Principal Register under 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.  If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following issue:

 

Information Requirement

 

In order to allow for proper examination of this application, including the final determination as to whether the mark is merely descriptive in relation to the goods, the applicant must submit samples of advertisements or promotional materials for the goods or, if unavailable, for goods of the same type.  If such materials are not available, the applicant must describe the nature, purpose and channels of trade of the goods identified in the application. 

 

Specifically, the applicant must state whether the applicant’s goods will consist of two functions or products in one toy.  More generally, the applicant must state whether the mark has any meaning in relation to the goods.  37 C.F.R. Section 2.61(b); TMEP sections 814. 

 

For Applicant’s Information Only - Fee Increase

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.

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

/Amy L. Alfieri/

Trademark Attorney

Law Office 113

phone: (703) 308-9113, ext. 462

fax: (703) 746-8113

ecom113@uspto.gov (formal responses)

 

 

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.