UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/516638
APPLICANT: IVFOnline.com, LLC
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CORRESPONDENT ADDRESS: WILLIAM W. JONES 6 JUNIPER LANE MADISON, CONNECTICUT 06443
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom111@uspto.gov
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MARK: WWW. IVFONLINE.COM
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CORRESPONDENT’S REFERENCE/DOCKET NO: H-GenX 1
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 76/516638
The assigned examining attorney has reviewed the referenced application and determined the following.
Section 2(e)(1) Refusal
The examining attorney refuses registration on the Principal Register because the proposed mark merely describes the services. 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/services. 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).
The examining attorney must consider whether a mark is merely descriptive in relation to the identified goods/services, 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).
The applicant's mark, WWW.IVFONLINE.COM, is for "retailing and supplying specialty products for use in the field of in vitro fertilization." The mark is merely descriptive because it describes a feature, purpose, and use of the services. “IVF” is the acronym for “in vitro fertilization.” See www.acronymfinder.com. “Online” means
on-line (òn¹lìn´, ôn¹-) adjective
1. Computer Science. a. Under the control of a central computer, as in a manufacturing process or an experiment. b. Connected to a computer network. c. Accessible via a computer or computer network: an on-line database.
2. In progress; ongoing: on-line editorial projects.[1]
Users may order IVF products online, from the applicant. Therefore, the mark is merely descriptive and unregistrable on the Principal Register.
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 issues.
The recitation of services is unacceptable as indefinite because the nature of the services rendered is not clear as presented. The applicant may adopt the following recitation, if accurate: Electronic retailing services via computer featuring specialty products for use in the field of in vitro fertilization, in International Class 35. TMEP §1402.11.
The applicant is advised that the Trademark Office Manual of Acceptable Identifications of Goods and Services, which includes the correct classifications of the listed goods and services, may be found online at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/. The applicant may find this resource to be quite useful in framing an amended and acceptable identification of services in this matter. Parentheses and brackets should not be included in the actual identification of services adopted by the applicant.
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. §2.71(a); TMEP §1402.06. Therefore, the applicant may not amend to include any services that are not within the scope of the services recited in the present identification.
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 704.02.
Further action awaits response to the above.
/Mrs. W. K. H. Price, Esq./
Trademark Attorney
Law Office 111
(703) 308-9111,ext. 426
ecom111@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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.
[1]The American Heritage® Dictionary of the English Language, Third Edition copyright © 1992 by Houghton Mifflin Company. Electronic version licensed from INSO Corporation; further reproduction and distribution restricted in accordance with the Copyright Law of the United States. All rights reserved.