UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/516456
APPLICANT: Doman Forest Products Limited
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CORRESPONDENT ADDRESS: JAY K. MALKIN KLAAS, LAW, O'MEARA & MALKIN, P.C. 1999 BROADWAY, SUITE 2225 DENVER CO 80202
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom106@uspto.gov
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MARK: SILVERTREE CLASSIC
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CORRESPONDENT’S REFERENCE/DOCKET NO: DFPL TM-2
CORRESPONDENT EMAIL ADDRESS:
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Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 76/516456
With respect to applicant’s general listing of goods for “lumber”, the following refusal applies, assuming that the goods include lumber from the type of trees referred to below.
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. §1052(e)(1); TMEP §§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 examining attorney must consider whether a mark is merely descriptive in relation to the identified goods, 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).
As can be seen from the enclosed dictionary definitions, the term “silver tree” refers to particular types of trees. To the extent that applicant’s goods include any lumber from the trees referred to in the attachments, the mark describes these goods. Applicant’s mark is merely a compound word version of this term along with the term “classic”. The additional term “classic” is equally descriptive in the overall phrase “silvertree classic” that tells the potential purchaser that the goods are silver tree lumber of the highest rank or class.
To the extent that the goods do not include lumber from the trees referred to in the attached definition, the examining attorney refuses registration because the mark consists of or comprises deceptive matter in that the goods do not include lumber from the type of tree referred to in the mark. Trademark Act Section 2(a), 15 U.S.C. §1052(a). See In re Budge Mfg. Co., 857 F.2d 773, 8 USPQ2d 1259 (Fed. Cir. 1988); In re Perry Mfg. Co., 12 USPQ2d 1751 (TTAB 1989); In re Shapely, Inc., 231 USPQ 72 (TTAB 1986); TMEP §§1203.02 et seq. Note specifically how the second definition refers to the “silver tree” as an Australian timber tree. “Timber” means “wood used as a building material; lumber.” See attached dictionary definition. The silver tree of Australia is thus a tree whose wood is suitable for use as lumber.
The examining attorney refuses registration on the Principal Register because the mark is deceptively misdescriptive of the goods. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §1209.04.
A mark is descriptive if it conveys an accurate or true idea of an ingredient, quality, characteristic, function or feature of the relevant goods. If the idea conveyed by the mark is false, and also plausible, then the term is deceptively misdescriptive and is unregistrable under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1). In re Woodward & Lothrop Inc., 4 USPQ2d 1412 (TTAB 1987); In re Ox‑Yoke Originals, Inc., 222 USPQ 352 (TTAB 1983). TMEP §1209.04.
For any goods not derived from the trees referred to in the attachment, the false representation of the mark is quite plausible because the silver tree is a timber tree.
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.
The nature of the goods on which the applicant uses the mark is not clear from the present record. The applicant must submit samples of advertisements or promotional materials. If such materials are not available, the applicant must submit a photograph of the goods and describe their nature, purpose and channels of trade. 37 C.F.R. §2.61(b); TMEP §§814 and 1402.01(d).
Specific inquiry is made as to whether any of the lumber will be derived from either of the trees referred to in the attached dictionary definition. It is apparent that the western red cedar lumber is not derived from these trees. Do applicant’s goods include other lumber not derived from the trees referred to in the attachment?
Note that the above information request and factual inquiries form an important part of this Office action. An applicant may not rely upon its own failure to provide information legitimately sought by the Office in claiming that its mark is registrable. See In re Page, 51 USPQ2d 1660 (TTAB 1999). Therefore, should applicant wish to pursue this application further by responding to this Office action, any failure to address the above information request and inquiries will be considered grounds for abandonment for failure to file a complete response. See 37 C.F.R. Section 2.65(a).
The applicant has filed asserting use in commerce under Trademark Act Section 1(a), 15 U.S.C. §1051(a), and claiming priority under Section 44(d), 15 U.S.C. §1126(d), based on a foreign application. Under these circumstances, the applicant may rely solely on use in commerce as the basis for registration and not the expected foreign registration, and still claim the benefit of the priority filing date. If the applicant chooses to do so, this Office will approve the case for publication without waiting for the applicant to submit the foreign registration. Of course, the application must be in condition for publication in all other respects. If the applicant wishes to proceed relying on use in commerce as the sole basis for registration, with the claim of priority, the applicant should so advise the examining attorney. TMEP §§806.02(f) and 806.04(b).
If the applicant does not so indicate, this Office will presume that the applicant wishes to rely on the foreign registration as an additional basis for registration and will expect the applicant to submit a true copy, a photocopy, a certification, or a certified copy of the foreign registration and, if appropriate, an English translation. It is customary for the translator to sign the translation. TMEP §§1004.01 and 1004.01(b).
SEARCH CLAUSE
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.
If the applicant has any questions about this Office action, please telephone the assigned examining attorney.
/Paul F. Gast/
Examining Attorney, L. O. 106
(703) 435-3391 ext. 297 main
(703) 308-9106 ext. 297 alternate
(703) 746-8106 LO 106 FAX
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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.