Offc Action Outgoing

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  76/524091

 

 

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.

 

Section 2(e)(1) - Descriptive Refusal

The examining attorney refuses registration on the Principal Register because the proposed mark merely describes the goods/services.  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/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 §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). 

 

In this case, the term “SERVICE” appears to be generic for the identified “service programs” while the wording “PUSH-BUTTON” identifies a feature or characteristic of the applicant’s services, namely, that they are performed after the push of a small button that activates an electric circuit.  (See attached entries from The American Heritage Dictionary of the English Language, Fourth Edition, 2000.)

 

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 requirements.

 

Recitation of Services

The recitation of services is unacceptable as indefinite because the nature of the service is unclear.  Moreover, the wording in the recitation of services is too broad because it could include services classified in other classes.  The applicant may amend the recitation to the following, if accurate: 

 

                        “Public utility services” in International Class 039

 

                        “Utility meter reading services” in International Class 042.

 

TMEP §1402.11.

 

For assistance regarding an acceptable listing of goods and/or services, please see the on‑line searchable Manual of Acceptable Identifications of Goods and Services, at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.

 

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.

 

Request for Information

The nature of the service is not clear from the present record.  In order to allow proper identification and classification of the services on which the applicant intends to use the mark, the applicant must submit samples of advertisements or promotional materials for services of the same type.  If such materials are not available, the applicant must describe the nature, purpose and channels of trade of the services with which the applicant has asserted a bona fide intent to use the mark.  37 C.F.R. §2.61(b); TMEP §§814 and 1402.01(d).

 

Combined Applications

If the applicant prosecutes this application as a combined, or multiple‑class, application, the applicant must comply with each of the following.

 

(1)  The applicant must list the goods/services by international class with the classes listed in ascending numerical order.  TMEP §1403.01.

 

(2)  The applicant must submit a filing fee for each international class of goods/services not covered by the fee already paid.  37 C.F.R. §§2.6(a)(1) and 2.86(a); TMEP §§810.01 and 1403.01.  Effective January 1, 2003, the fee for filing a trademark application is $335 for each class.  This applies to classes added to pending applications as well as to new applications filed on or after that date.  

 

Disclaimers

If the mark is determined to be otherwise registrable, the applicant must still disclaim the following unregistrable matter.

 

The applicant must disclaim the wording “SERVICE” apart from the mark as shown. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a).  The applicant must insert the required disclaimer even if registration of the mark is sought on the Supplemental Register or on the Principal Register under Section 2(f), because appears to be generic for the identified “utility service programs”.  In re Wella Corp., 565 F.2d 143, 196 USPQ 7 (C.C.P.A. 1977); In re Creative Goldsmiths of Washington, Inc., 229 USPQ 766 (TTAB 1986); In re Carolyn’s Candies, Inc., 206 USPQ 356 (TTAB 1980); TMEP §1213.03(b).

 

The computerized printing format for the Trademark Official Gazette requires a standard form for a disclaimer.   TMEP §1213.08(a)(i).  A properly worded disclaimer should read as follows:

 

No claim is made to the exclusive right to use “SERVICE” apart from the mark as shown.

 

See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).

 

 

/Nelson B. Snyder III/

Trademark Attorney

Law Office 103

(703) 308-9103 ext. 147

(703) 746-8103 (fax)

ecom103@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.

 

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.