UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/519185
APPLICANT: Candid Color Systems, Inc.
|
|
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
|
MARK: STUDIO MAESTRO
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS:
|
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.
|
Serial Number 76/519185
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 The refusal under Trademark Act Section 2(d) is withdrawn.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 29, 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 29, 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)
November 16, 2003, Sunday
SECTION: South Sound; Pg. E01
LENGTH: 850 words
HEADLINE: Tacoma small-business owner says his 36-year career was picture-perfect
BYLINE: DAN VOELPEL, The News Tribune
BODY:
Sure, you can take your old photographs to any number of digital studios nowadays where computer wizards will work their technological voodoo and e-mail you the image.
But somehow it's not the same as being greeted by Mary Bleckert at the front counter and having her call her husband out of the darkroom to study your old family photos with the ...
Copyright 2003 Argus Leader (Sioux Falls, SD)
All Rights Reserved
Argus Leader (Sioux Falls, SD)
November 14, 2003 Friday
SECTION: ENTERTAINMENT; Pg. 6D
LENGTH: 1368 words
HEADLINE: Photographer, painter featured at museum
BYLINE: Jennifer Sanderson, Staff, jsanders£argusleader.com
BODY:
... Series at the South Dakota Art Museum in Brookings.
"Quite often, an object must be distilled and reduced to communicate its vital simplicity," says Jayne Erickson, named South Dakota Photographer of the Year in March by the Professional Photographers of America. She keeps a studio in Sioux Falls and a virtual studio at www.jayneericksonphoto.com. "With careful use of light, an object or a moment can be transformed."
Denise DuBroy, who paints on synthetic paper, uses transparent layers to manipulate her oil mediums. Putty knives, string, tape, ...
Copyright 2003 FLORIDA TODAY (Brevard County, FL)
All Rights Reserved
FLORIDA TODAY (Brevard County, FL)
October 18, 2003 Saturday Final and all Editions
SECTION: HOME & GARDEN; Pg. 1
LENGTH: 1203 words
HEADLINE: Dramatic decor good eye candy
BYLINE: Kathy Hagood For FLORIDA TODAY
BODY:
... But it's not designed for that."
Some people find the works visually shocking. Several visitors to the Garbotz home have shown physical discomfort, Fred said and laughed.
"We don't take the decor too seriously. It's all for fun," he said.
The studio online
To learn more about the artists and to view photographs, visit Rockledge Design Studios' Web site at www.rockledgedesign.com
Kathy Hagood, for FLORIDA TODAY
Masterfully done: The master bedroom in the Garbotz home features steel giraffes designed by Fred Garbotz, colorful ...
Copyright 2003 Centaur Communications Ltd.
The Engineer
September 12, 2003
SECTION: Pg. 46
LENGTH: 732 words
HEADLINE: DESIGN ENGINEERING: Rendered easy
BODY:
... quality as that from the high-end renderers in expert hands but it could get pretty close. ImageStudio can produce high-quality, 'in context', photo-realistic renderings and animations with minimum effort.
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
March 15, 2003
FT-ACC-NO: A200303157D-40FE-GNW
LENGTH: 313 words
HEADLINE: STRAIGHT ANSWERS
BODY:
How did you conceive Retake of Amrita?
It's series of photo montages based on family archives that I inherited from my grandfather, Umrao Sher-Singh. I scanned the photographs, regrouped them while using the photoshop as a virtual studio and explored the intriguing personality of my aunt, Amrita Sher-Gil.
Did you face any criticism while regrouping the photos?
Since I possess the photos I have complete freedom in indulging in playfulness. For instance, I have tried a ...
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.
December 13, 2002 Friday
LENGTH: 258 words
HEADLINE: Kodak to Build R&D Center with US$1.2 Billion in China
DATELINE: BEIJING
BODY:
... studio costs RMB million to RMB 2 million each, it is too expensive to afford. So, the traditional photo shops will keep go on for a period of time.
With the digital photo studios, customers need nothing to do than delivering their photographs to the computer of photo studios through Internet without going out of their home. ...
Copyright 2002 PR Newswire Association, Inc.
PR Newswire
November 4, 2002, Monday
SECTION: FINANCIAL NEWS
DISTRIBUTION: TO BUSINESS AND TECHNOLOGY EDITORS
LENGTH: 844 words
HEADLINE: NikonPro.com Enhances Professional Photographer's Online Studio To Promote Greater Sales Potential and Exposure for Members
DATELINE: MELVILLE, N.Y., Nov. 4
Copyright 2002 Journal Sentinel Inc.
Milwaukee Journal Sentinel (Wisconsin)
October 12, 2002 Saturday FINAL EDITION
SECTION: BUSINESS; Pg. 01D
LENGTH: 426 words
HEADLINE: WCTC program gets $1 million
BYLINE: RICK BARRETT rbarrett£journalsentinel.com
BODY:
... arts facility the Harry V. Quadracci Printing and Graphic Arts Center.
The $5.4 million center opened in 2001 with a 12,000-square-foot pressroom, multiple sheet-fed and flexographic presses, a graphics design laboratory, digital photography studio, three computer labs and a distance-education classroom where students can take classes from the University of Wisconsin-Stout.
The center is a fitting legacy for a man who lived to advance ink on paper, said Thomas Quadracci, Harry's brother and ...
Copyright 2002 Gale Group, Inc.
Business and Industry
Copyright 2002 Photo Marketing Association International
Photo Marketing Newsline
July 10, 2002
SECTION: Pg. 3
RDS-ACC-NO: 03667374
LENGTH: 54 words
HEADLINE: Neuhard Associates Inc. was appointed mid-Atlantic and New England representative for Cavea Inc.'s Pictures4Life program. (Industry notes).
BODY:
* Neuhard Associates Inc. was appointed mid-Atlantic and New England representative for Cavea Inc.'s Pictures4Life program. The program allows professional labs to offer photographers a fully integrated, " online" studio ordering and consumer e-commerce order fulfillment program. Call Barry Neuhard at (610) 525-6998.
Copyright 2001 Nationwide News Pty Limited
MX (Melbourne, Australia)
December 19, 2001, Wednesday
SECTION: NEWS; Pg. 4
LENGTH: 520 words
HEADLINE: THE MAD MINUTE
BYLINE: CHAD GRACEY with CARLA DANAHER
BODY:
... happened and we put the song up right away for download off our website and we just thought it was an appropriate song to help heal. And it just grew and radio picked it up and started playing it a lot and then this online photography studio made an impromptu video for it that sort of paid homage to the rescue workers and then VH1 played it 40 times over this one weekend. So we made another video with some of that footage and we decided to donate part of the proceeds to the relief ...
Copyright 2001 PR Newswire Association, Inc.
PR Newswire
November 1, 2001, Thursday
SECTION: FINANCIAL NEWS
DISTRIBUTION: TO BUSINESS AND TECHNOLOGY EDITORS
LENGTH: 863 words
HEADLINE: Nikon Unveils NikonPro at PhotoPlus Expo 2001;
NikonPro: The Professional Photographer's Online Studio Empowers Pro Photographers to Maximize Their Business Potential
DATELINE: MELVILLE, N.Y., Nov. 1
Copyright 2001 Gale Group, Inc.
ASAP
Copyright 2001 Fairchild Publications, Inc.
WWD
April 2, 2001
SECTION: Pg. 1 ; ISSN: 0149-5380
IAC-ACC-NO: 73232588
LENGTH: 1032 words
HEADLINE: NEIMANMARCUS.COM SHINES BRIGHT LIGHT ON TOP-TIER BRANDS; Neiman Marcus Group markets on the web; Brief Article
BYLINE: Williamson, Rusty
BODY:
... a seasonal trend list of must-have items, a link to facilitate ordering from Neiman's catalogs, and a button to find assistance from a personal shopper, long a hallmark of Neiman's pampering philosophy. Personal shoppers can use a virtual photography studio to cherry-pick outfits and e-mail photos of them to individual customers. Neiman's also is aiming to make navigating the site easier with the rollout of new back-room technology that's designed to expedite browsing and purchasing time.
"Everything we're doing is focused on making the ...
Copyright 2000 Business Wire, Inc.
Business Wire
November 9, 2000, Thursday
DISTRIBUTION: Business Editors/High-Tech Writers
LENGTH: 646 words
HEADLINE: Nikon Selects Zing to Provide Infrastructure for NikonNet; First Major Online Photography Resource Targeted to Both Photohobbyists and Consumers
DATELINE: Nov. 9, 2000
BODY:
... vice president, Internet Development and Marketing, Nikon Inc. "As the leading online photo services company, Zing is the perfect partner for us in this venture. Our shared vision for NikonNet is to offer photohobbyists a place where they can build a photography studio online. "
NikonNet uses the Zing Network as its foundation, providing NikonNet users with:
-- A complete suite of digital photo capabilities: simple image uploading, photo editing and enhancement, greeting cards, private or public shared albums for instant sharing with family, ...
Copyright 2000 Business Wire, Inc.
Business Wire
November 1, 2000, Wednesday
DISTRIBUTION: Business Editors
LENGTH: 544 words
HEADLINE: Collages.net Closes Initial $1.6 Million Round of Financing; Internet Startup Focuses on Professional Event Photographers
DATELINE: NEW YORK, Nov. 1, 2000
BODY:
... Collages.net, which sends e-mails to event attendees. Attendees then visit the website, view the photos, e-mail them to friends and family, and order prints or a CD-ROM of the portfolio. Collages.net also creates and maintains websites for professional event photographers to use in individual- studio online marketing efforts.
B2B-Hive:
B2B-Hive is a NYC-based venture firm established to accelerate the development of online businesses. B2B-Hive functions as an early-stage venture capitalist and incubator, providing a superior value proposition and ...