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  76/538463

 

Search Results

 

The Office records have been searched and no similar registered or pending mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.

 

Section 2(e)(1) - Descriptive Refusal

 

Registration is refused because the proposed mark merely describes a feature of applicant’s goods and/or services.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §§1209 et seq.

 

It is not necessary that a term describe all of the purposes, functions, characteristics or features of the goods/services to be merely descriptive.  It is enough if the term describes one attribute of the goods/services.  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 attached evidence shows that “dual mode” is a phrase commonly used to describe printers that can print in two different ways.  As additional evidence, definitions of these words are set forth below.

 

du·al

 
du·al (d¡¹el, dy¡¹-) adjective

1.    Composed of two usually like or complementary parts; double: dual controls for pilot and copilot; a car with dual exhaust pipes.

2.    Having a double character or purpose: a belief in the dual nature of reality.

3.    Grammar. Of, relating to, or being a number category that indicates two persons or things, as in Greek, Sanskrit, and Old English.

 

noun

Grammar.

1.    The dual number.

2.    An inflected form of a noun, adjective, pronoun, or verb used with two items or people.

 [Latin duâlis, from duo, two.]

— du¹al·ly adverb[1]

 

mode

 
mode (mod) noun

1.    a. A manner, way, or method of doing or acting: modern modes of travel. See synonyms at method. b. A particular form, variety, or manner: a mode of expression. c. A given condition of functioning; a status: The spacecraft was in its recovery mode.

2.    The current or customary fashion or style. See synonyms at fashion.

3.    Music. a. Any of certain fixed arrangements of the diatonic tones of an octave, as the major and minor scales of Western music. b. A patterned arrangement, as the one characteristic of the music of classical Greece or the medieval Christian Church.

4.    Philosophy. The particular appearance, form, or manner in which an underlying substance, or a permanent aspect or attribute of it, is manifested.

5.    Logic. a. See modality. b. The arrangement or order of the propositions in a syllogism according to both quality and quantity.

6.    Statistics. The value or item occurring most frequently in a series of observations or statistical data.

7.                     Mathematics. The number or range of numbers in a set that occurs the most frequently.

8.    Geology. The mineral composition of a sample of igneous rock.

9.    Physics. Any of numerous patterns of wave motion.

10.  Grammar. Mood.

 [Middle English, tune, from Latin modus, manner, tune. Sense 2, French, from Old French, fashion, manner, from Latin modus.][2]

While combinations of descriptive words may result in a composite mark that is not itself descriptive, that has not occurred here.  The applicant’s mark offers none of the wordplay or incongruity necessary to avoid a descriptiveness refusal.  As a result, registration on the Principal Register must be refused.

 

Registration Refused -- Method

 

Registration is refused because the proposed mark, as used on the specimen of record, merely identifies a process and/or system and would not be perceived as a trademark for the goods identified in the application.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051, 1052 and 1127.  See In re Griffin Pollution Control Corp., 517 F.2d 1356, 186 USPQ 166 (C.C.P.A. 1975); Congoleum Corp. v. Armstrong Cork Co., 218 USPQ 528, 535 n.13 (TTAB 1983); In re Big Stone Canning Co., 169 USPQ 815 (TTAB 1971).

 

In this case, the specimen comprises a press release and indicates use solely to identify a process and/or system.  The applicant’s press release states that the Business Color Press is “unique in its ability to print both process color as well as black-on-white jobs.”  The press release then continues “This capability, which we’ve term Dual Mode . . . .”  Thus, the applicant itself states that the mark identifies a process of printing, and not the printer itself.

 

Where a term is used solely to identify a process, style, method, system, or the like, it is not registrable as a trademark.  A process or system is only a way of doing something, and does not generally constitute a marketable or tangible product.  The name of a system or process does not function as a trademark unless it is also used to identify and distinguish the goods listed in the application, and to indicate the source of those goods.  The determination of whether matter functions solely as the name of a system or process and also as a trademark is based on a consideration of the manner in which the proposed mark is used, as evidenced by the specimen and any other information of record.  See In re Griffin Pollution Control Corp., 517 F.2d 1356, 186 USPQ 166 (C.C.P.A. 1975) (OXINITE held not to function as a trademark for a gas mixture because, based on the specimens of record, consumers would associate the mark only with a water treatment process and not with the identified goods); See also TMEP §1301.02(e).

 

Applicant may respond to this refusal by submitting a substitute specimen showing proper use of the proposed mark as a trademark (to indicate the source of the goods), along with a statement that “the substitute specimen was in use in commerce at least as early as the application filing date,” verified with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.59(a); TMEP §904.09.  A sample declaration is set forth below:

 

                        Declaration

 

The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that the facts set forth in this application are true; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.

 

 

_____________________________

(Signature)

 

_____________________________

(Print or Type Name and Position)

 

_____________________________

(Date)

 

 

Identification of Goods

 

The current wording used to describe the goods needs clarification because “digital image printers” is vague.  TMEP §1402.01.  The applicant must supply the common commercial name of these goods, or a brief explanation.

 

Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.

 

The applicant must rewrite the identification of goods in its entirety because of the nature and extent of the amendment.  37 C.F.R. §2.74(b).

 

Because it is possible that, when properly identified, the applicant’s goods may belong in more than one international class, information about adding classes to an application is set forth below:

 

Combined Applications

 

If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the requirements below for those goods and/or services based on actual use in commerce under Trademark Act Section 1(a):

 

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

 

(2)   Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid. 37 C.F.R. §2.86(a)(2); TMEP §§810.01 and 1403.01.

 

(3)   Applicant must submit:

 

(a)    dates of first use of the mark anywhere and dates of first use of the mark in commerce; the dates of use, both anywhere and in commerce, must be at least as early as the filing date of the application, 37 C.F.R. §§2.34(a)(l)(i), 2.34(a)(1 )(ii) and 2.86(a)(3);

 

(b)   one specimen showing use of the mark for each class of goods and/or services; the specimen(s) must have been in use in commerce at least as early as the filing date of the application; 37 C.F.R. §§2.34(a)(1)(iv) and 2.86(a)(3); and

 

(c)    both the dates of use and a statement that "the specimen was in use in commerce at least as early as the filing date of the application" must be verified in a notarized affidavit or a signed declaration under 37 C.F.R. §2.20; 37 C.F.R. §§2.59(a) and 2.71(c).  A sample declaration appears above.

 

Specimen

 

Applicant must submit (1) a substitute specimen showing the mark as it is used in commerce in the sale or advertising of the services, and (2) a statement that “the substitute specimen was in use in commerce at least as early as the filing date of the application,” verified with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §§2.56 and 2.59(a); TMEP §904.09.

 

The current specimen of record comprises a press release and is unacceptable as evidence of actual service mark use because advertisements and press releases do not prove that the mark is actually being used on goods.  Only items actually affixed to the goods, or showing the mark affixed to the goods, suffice as such proof. 

 

Examples of acceptable specimens for services are signs, photographs, brochures, website printouts or advertisements that show the mark used in the sale or advertising of the services.  TMEP §§1301.04 et seq.

 

Fee Increase

Fee increase effective January 1, 2003

Effective January 1, 2003, the fee for filing an application for trademark registration will be increased to $335.00 per International Class.  The USPTO will not accord a filing date to applications that are filed on or after that date that are not accompanied by a minimum of $335.00. 

 

Additionally, the fee for amending an existing application to add an additional class or classes of goods/services will be $335.00 per class for classes added on or after January 1, 2003.

 

/Doritt Carroll/

Examining Attorney, LO 116 (703) 306-7904

ecom116@uspto.gov

www.gov.uspto.report/teas/index.html

fax: (703) 746-8116

 

 

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.