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

 

Final Action

This letter responds to the applicant’s communication filed on July 6, 2004 in which the applicant disclaimed the term “SERVICE”, addressed the request for additional information, and argued against the refusal to register under Trademark Act Section 2(e)(1).

 

The disclaimer is acceptable and has been entered in the record.  Additionally, the applicant appears to have made a good faith effort to address the request for additional information.  As a result, the request for additional information is withdrawn.

 

Section 2(e)(1) Final Refusal

The December 31, 2003 Office Action refused registration under Trademark Act Section 2(e)(1) because the mark merely describes the identified services.  The applicant argued against the refusal in its July 6, 2004 communication by stating that the mark is suggestive, not merely descriptive.

 

The examining attorney has considered the applicant’s arguments carefully but found them unpersuasive.

 

A mark is suggestive if some imagination, thought or perception is required to determine the nature of the goods and/or services from the term.  A suggestive term differs from a descriptive term, which immediately and directly conveys some information about the goods and/or services.  In re Aid Laboratories, Inc., 223 USPQ 357 (TTAB 1984).  A suggestive mark is registrable on the Principal Register; TMEP §1209.01(a).

 

The determination of whether a mark 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 wording “PUSH-BUTTON SERVICE” is a commonly used phrase of art to signify service or a choice-driven menu that is accessed via touchtone telephone or similar communications device employing a “small button that activates an electric circuit when pushed”.  (See previously supplied entries from The American Heritage Dictionary of the English Language, Fourth Edition, 2000, as well as attached news article printouts from www.lexis.com and attached web page printouts.)  Thus, the wording describes a feature of the applicant’s “program that allows consumers access to private repair providers”, namely, that it is accessed via touchtone telephone or similar communications device.   

 

A term need not describe all of the purposes, functions, characteristics or features of the goods and/or services to be merely descriptive.  For the purpose of a Section 2(e)(1) analysis, it is sufficient that the term describe only one attribute of the goods and/or services to be found merely descriptive.  In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973); TMEP §1209.01(b).

 

The applicant names two third party registrations (U.S. Registration No. 1909208 for “PUSHBUTTON LANDLORDING” and U.S. Registration No. 2418029 for “PUSHBUTTON CFD”) in support of its argument that its “PUSH-BUTTON SERVICE” mark is suggestive. 

 

The Trademark Trial and Appeal Board does not take judicial notice of registrations, and the mere submission of a list of registrations does not make these registrations part of the record.  In re Delbar Products, Inc., 217 USPQ 859 (TTAB 1981); In re Duofold Inc., 184 USPQ 638 (TTAB 1974).  To make registrations proper evidence of record, soft copies of the registrations or the complete electronic equivalent (i.e., printouts of the registrations taken from the electronic search records of the United States Patent and Trademark Office) must be submitted.  TMEP §710.03.  See In Re JT Tobacconists, 59 USPQ2d 1080, 1081 n. 2 (TTAB 2001); In re Styleclick.com Inc., 57 USPQ2d 1445, 1446 n. 2 (TTAB 2000); Raccioppi v. Apogee Inc., 47 USPQ2d 1368, 1370 (TTAB 1998); In re Volvo Cars of North America Inc., 46 USPQ2d 1455 (TTAB 1998); In re Broadway Chicken Inc., 38 USPQ2d 1559, 1560 n.6 (TTAB 1996); Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230, 1231-32 (TTAB 1992).

 

Nevertheless, the two listed third party registrations (which combine the term “PUSHBUTTON” with another unrelated descriptive term) are distinguishable from the applicant’s mark “PUSH-BUTTON SERVICE” in which the wording as a whole has a specific descriptive meaning.

 

As a result of the foregoing, the refusal under Trademark Act Section 2(e)(1) is maintained and made FINAL.

 

Recitation of Services – Final Requirement

The December 31, 2003 Office Action stated that the recitation of services was unacceptable as indefinite because the nature of the services was unclear.  In its July 6, 2004 communication, the applicant states that “the services are intended to be a program that allows consumers access to private repair providers without having to go through the utility provider”.  While it is unclear whether this statement is a proposed amendment to the recitation, it nevertheless remains   unacceptable as indefinite because it is not sufficiently clear for proper classification. 

 

As a result of the foregoing, the requirement for an acceptable recitation of services is maintained and made FINAL.

 

The applicant may amend the recitation to the following, if accurate: 

 

“Utility services programs, namely, prepaid preventive maintenance service plans for telephones, telephone wiring, and electrical wiring in buildings” in International Class 036.

 

“Utility service programs, namely, providing repair of telephones, telephone wiring and electrical wiring in buildings” in International Class 037.

 

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/.

 

The applicant is reminded that an application may be amended to clarify or limit the identification, but 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.

 

Combined Applications

The applicant is also reminded that if it 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.  

 

Response Options

Applicant may respond to this final action by: 

 

(1)   submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); and/or

(2)   filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).

 

In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2).  37 C.F.R. §2.64(a).  See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matter.  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

NOTICE:  TRADEMARK OPERATION RELOCATING OCTOBER AND NOVEMBER  2004

 

The Trademark Operation is relocating to Alexandria, Virginia, in October and November 2004.  Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:

 

Commissioner for Trademarks

P.O. Box 1451

Alexandria, VA  22313-1451

 

Applicants, registration owners, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at www.uspto.gov.

 

My Law Office will move on 10/19/04.  To reach me by phone after that date call (571) 272-9284. 

 

To submit a fax response to this Office action after that date, send your response to the Law Office fax number, namely (571) 273-9103.

 

 

/Nelson B. Snyder III/

Trademark Examining Attorney

Law Office 103

(703) 308-9103 ext. 147

(703) 746-8103 (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.

 

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.

 

Print Request:   Selected Document(s): 3-18

                 

Time of Request: August 27, 2004  01:40 PM EDT

 

Number of Lines: 126

Job Number:      1841:9302844

 

Client ID/Project Name: 

 

Research Information:

 

 US Newspapers and Wires

"push button service"

 

3.  The Post-Standard (Syracuse, NY), September 4, 1998 Friday Metro Edition, LOCAL NEWS; Pg. B5, 139 words, CANDIDATE URGES HELP FOR SENIORS, SUE WEIBEZAHL The Post-Standard

... recording and employs a push-button service menu, which Koppell said is  ...

 

4. The Times Union (Albany, NY), June 5, 1997, Thursday,, THREE STAR EDITION, Pg. A1, 729 words, Rotary phone's ranks thin in push-button era, JULIE CARR SMYTH; Business writer

... monthly surcharge for push-button service that enticed Rosenberger, and hundreds of  ...

... counties, surcharges for push-button service were eliminated for both  ...

... Enticing rotary users into push-button service makes it easier to  ...

... in 1968, but push-button service was initially viewed as foreign and  ...

 

5. The Baltimore Sun, May 3, 1997, Saturday,, FINAL EDITION, Pg. 11C, 899 words, 10-digit exercise in eternity; Loyalists: Rotary dialers are toning finger muscles on the new 10-digit numbers. It's a 15-second workout., Sean Somerville, SUN STAFF

... phone companies for push-button services bought rotary phones  ...

 

6. St. Petersburg Times (Florida), December 11, 1996, Wednesday, 0 South Pinellas Edition, CITY & STATE; Pg. 1B, 814 words, Committee chairman steps down, LUCY MORGAN, TALLAHASSEE

... phone line for push button service, a charge Belote  ...

 

7. Arkansas Democrat-Gazette (Little Rock, AR), February 27, 1996, Tuesday, 604 words, Richard Allin

... devised the ultimate in push-button services: HELLO! Welcome to the Psychiatric  ...

 

8. Cincinnati Post, January 1, 1996, Sec B; pg 7, 749 words, 21st century banking: Computer, phone new financial tools, Patrick Larkin, Cincinnati; OH; US; North Central, 9623281, XCIP BTL

... customer likes to use the push-button service or talk to a banker -- and  ...

... TeleBank opt for push button services. The same customer information is  ...

 

9. Hartford Courant (Connecticut), July 31, 1995 Monday, STATEWIDE, CONNECTICUT LIVING; Pg. E3, 685 words, NEW CONVERTER BOXES GIVE CABLE CUSTOMERS MORE OPTIONS, CONTROL, BILL KEVENEY; Courant Staff Writer

... said. TCI hopes the push-button service will spur "impulse  ...

 

10. The New York Times, June 2, 1995, Friday, Late Edition - Final, Section D;  Page 1;  Column 5;  Business/Financial Desk , 995 words, COMPANY NEWS; Regulators Back Plan to Freeze Nynex Rates, By MARK LANDLER

... for touch-tone, or push button, service. Eliminating that charge would reduce  ...

 

11. Columbus Dispatch (Ohio), April 14, 1995, Friday, Pg. 4B, 306 words, GTE CUTTING RATES IN 80 OHIO COUNTIES, Alan Johnson, Dispatch Statehouse Reporter

... price break on push-button service that now costs $ 2. Business push-button service will cost $ 2,  ...

 

12. InternetWeek, November 14, 1994, NETWORK SERVICES; Pg. 45, 70 words, In Brief; BELL ATLANTIC TO CUT RATES

... month reduction for push-button services and 1- to 6-cent  ...

 

13.   Detroit Free Press, October 19, 1994 Wednesday METRO FINAL EDITION, BIZ; Pg. 1F, 387 words, AMERITECH IS HANGING UP ON ROTARY SERVICE COMPANY PROPOSES TO SWITCH CUSTOMERS TO TOUCH-TONE SERVICE BY END OF THE YEAR, STEPHEN ADVOKAT, Free Press Personal Finance Writer

... downtown Detroit were offered the push-button service. Ameritech said anyone with  ...

 

14. The Commercial Appeal (Memphis), February 26, 1994, Saturday,, Final Edition, Pg. 4A, 427 words, High-definition debacle

... for coming  interactive push-button services  like ordering a  ...

 

15. Sun-Sentinel (Fort Lauderdale, FL), February 6, 1994 SUNDAY,, ALL EDITION, Pg. 5E, 445 words, IF YOU RALLY FOR BLUE OR GRAY, 900' CAN GET YOU THERE ON TIME, LESLIE CRISS; Vicksburg Evening News

... country. The 24-hour, push-button service began Dec. 1,  ...

 

16. The Atlanta Journal and Constitution, April 22, 1993, Thursday, 624 words, BUSINESS REPORT: ON TECHNOLOGY, By Bill Hustedcommunications; computers; technology; equipment; language; conventions; books

... Mr. Schilling said. Push-button service If you've ever scheduled a  ...

 

17. The New York Times, January 27, 1991, Sunday, Late Edition - Final, Section 3; Page 5; Column 1; Financial Desk, 1986 words, All About/Answering Machines; For Yuppies, Now Plain Folks, Too, By ANTHONY RAMIREZ

... instruct the answering machine. When push-button service became more widely  ...

 

18. The San Francisco Chronicle, NOVEMBER 22, 1990, THURSDAY, FINAL EDITION, NEWS; Pg. B8, 146 words, Charge for Touch Tone Phone to End Feb 1

... up time-saving push button services such as voice mail to as many  ...