UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/519184
APPLICANT: Candid Color Systems, Inc.
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CORRESPONDENT ADDRESS: CLIFFORD C. DOUGHERTY III MCAFEE & TAFT TENTH FLOOR, TWO LEADERSHIP SQUARE 211 NORTH ROBINSON OKLAHOMA CITY, OKLAHOMA 73102 |
RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514
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MARK: STUDIO MAESTRO
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
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 76/519184
This letter responds to the applicant’s communication filed May 6, 2004 in which the applicant: (1) amended the identification of goods; (2) argued in favor of registration over the cited registrations; and (3) argued in opposition to the required disclaimer. The assigned examining attorney has reviewed the applicant’s correspondence and determined the following. The amended identification of goods is acceptable. The refusal under Trademark Act Section 2(d) is withdrawn.
In the Office Action of December 30, 2003, the applicant was advised that the word “STUDIO” must be disclaimed as descriptive. In response to this requirement, the applicant argues that the term “STUDIO” is not descriptive and the mark is unitary.
The examining attorney has considered the applicant’s arguments carefully but finds them unpersuasive. The requirement that the applicant disclaim the descriptive wording “STUDIO” is maintained and made FINAL.
The applicant argues that the goods allow a digital photographer to establish a digital portrait business without the physical constraints and costs of a traditional “studio.” The applicant goes on to state that a photographer may create an intangible “studio” at a remote location by using the applicant’s software. The term “studio” describes such an intangible or virtual establishment. As evidenced by the dictionary definition attached to the Office Action of December 30, 2003, a “studio” is broadly defined as “an artist’s workroom,” or “a photographer’s establishment.” There is no requirement that this be an actual, physical location. Rather, virtual or online “studios” have become common in the photography industry. Please see the attached excerpts of articles retrieved from the Nexis® database on June 24, 2004 as evidence of the recognition that photography “studios” may be online or virtual. Since the applicant’s goods are used to create and manage these studies, the term must be disclaimed as descriptive of the function or purpose of the goods. Terms that describe the function or purpose of a product or service may be merely descriptive or generic under 15 U.S.C. §1051(e)(1). In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987) (SCREENWIPE held generic for an anti-static cloth used for cleaning computer and television screens); In re Central Sprinkler Co., 49 USPQ2d 1194 (TTAB 1998) (ATTIC generic for sprinklers installed primarily in attics); In re Reckitt & Colman, North America Inc., 18 USPQ2d 1389 (TTAB 1991) (PERMA PRESS generic for soil and stain removers for use on permanent press products); In re Wallyball, Inc., 222 USPQ 87 (TTAB 1984) (WALLYBALL held descriptive of sports clothing and game equipment); In re National Presto Industries, Inc., 197 USPQ 188 (TTAB 1977) (BURGER held merely descriptive of cooking utensils); In re Orleans Wines, Ltd., 196 USPQ 516 (TTAB 1977) (BREADSPRED held merely descriptive of jams and jellies).
The determination of whether a term is merely descriptive is considered in relation to the identified goods and/or services, not in the abstract. In re Polo International Inc., 51 USPQ2d 1061 (TTAB 1999) (Board found that DOC in DOC-CONTROL would be understood to refer to the “documents” managed by applicant’s software, not “doctor” as shown in dictionary definition); In re Digital Research Inc., 4 USPQ2d 1242 (TTAB 1987) (CONCURRENT PC-DOS found merely descriptive of “computer programs recorded on disk;” it is unnecessary that programs actually run “concurrently,” as long as relevant trade clearly uses the denomination “concurrent” as a descriptor of this particular type of operating system); In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985); In re American Greetings Corp., 226 USPQ 365, 366 (TTAB 1985) (“Whether consumers could guess what the product is from consideration of the mark alone is not the test”); TMEP §1209.01(b).
The applicant also argues that the mark is unitary and therefore the individual term “studio” need not be disclaimed. A disclaimer of a descriptive portion of a composite mark is unnecessary only where the form or degree of integration of that element in the composite makes it obvious that no claim other than of the composite would be involved. That is, if the elements are so merged together that they cannot be regarded as separable elements, the mark is a single unitary mark and not a composite mark and no disclaimer is necessary. TMEP Section 1213.05; In re National Presto Industries, Inc., 197 USPQ 188 (TTAB 1977) (PRESTO BURGER for electrical cooking utensils not unitary; requirement for disclaimer of “BURGER” affirmed). The mark in this case is composed of two separable elements that do not combine to form a composite mark with a new meaning. The descriptive significance of the term “studio” is not lost in the composite mark such that it would be considered a unitary mark.
The requirement that the applicant disclaim the descriptive wording “STUDIO” apart from the mark as shown is maintained and made FINAL. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a).
Applicant may respond to this final action by either: (1) submitting a timely response that fully satisfies any outstanding requirements, if feasible; or (2) timely filing an appeal of this final action to the Trademark Trial and Appeal Board. 37 C.F.R. §2.64(a); TMEP §715.01. If applicant fails to respond within six months of the mailing date of this refusal, the application will be abandoned. 37 C.F.R. §2.65(a).
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
/Verna Beth Ririe/
Trademark Attorney
Law Office 105
(703) 308-9105 ext. 176
(703) 872-9825 (office 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 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.
MAIL-IT REQUESTED: JUNE 24, 2004 10083K
CLIENT:
LIBRARY: NEWS
FILE: ALLNWS
YOUR SEARCH REQUEST AT THE TIME THIS MAIL-IT WAS REQUESTED:
PHOTOGRAPH! W/10 STUDIO W/2 (VIRTUAL OR ONLINE OR COMPUTER)
NUMBER OF STORIES FOUND WITH YOUR REQUEST THROUGH:
LEVEL 1... 164
LEVEL 1 PRINTED
THE SELECTED STORY NUMBERS:
9-10,12-13,19,30,36-37,40,52,56,70,78-79
DISPLAY FORMAT: 30 VAR KWIC
SEND TO: RIRIE, VERNA BETH
TRADEMARK LAW LIBRARY
2101 CRYSTAL PLAZA ARC
MAILBOX 314
ARLINGTON VIRGINIA 22202-4600
**********************************01568**********************************
Copyright 2003 The News Tribune
The News Tribune (Tacoma, Washington)
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Copyright 2003 FLORIDA TODAY (Brevard County, FL)
All Rights Reserved
FLORIDA TODAY (Brevard County, FL)
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The studio online
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Kathy Hagood, for FLORIDA TODAY
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Copyright 2003 Centaur Communications Ltd.
The Engineer
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The ImageStudio virtual environments are equivalent to a virtual photo studio based on typical product photography set-ups. They include optimal lighting, shadows, reflectivity and backgrounds, all with parameters that can easily be adjusted.
Input is primarily from StudioTools and Maya wire models, but ImageStudio has IGES input so it can take models from any 3D ...
Copyright 2003 Financial Times Information
All rights reserved
Global News Wire
Copyright 2003 The Economic Times of India, Coleman & Co Ltd
The Economic Times
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Did you face any criticism while regrouping the photos?
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Copyright 2002 Comtex News Network, Inc.
All Rights Reserved
Copyright 2002 SinoCast, All rights reserved
SinoCast
This content is provided to LexisNexis by Comtex NewsNetwork, Inc.
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Copyright 2002 PR Newswire Association, Inc.
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Business and Industry
Copyright 2002 Photo Marketing Association International
Photo Marketing Newsline
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Copyright 2001 Nationwide News Pty Limited
MX (Melbourne, Australia)
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Copyright 2001 PR Newswire Association, Inc.
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Copyright 2001 Gale Group, Inc.
ASAP
Copyright 2001 Fairchild Publications, Inc.
WWD
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Copyright 2000 Business Wire, Inc.
Business Wire
November 9, 2000, Thursday
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Copyright 2000 Business Wire, Inc.
Business Wire
November 1, 2000, Wednesday
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