UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/539095
APPLICANT: Edwards Systems Technology, Inc.
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CORRESPONDENT ADDRESS: JOHN H. WEBER BAKER & HOSTETLER LLP WASHINGTON SQUARE, SUITE 1100 1050 CONNECTICUT AVENUE, N.W. WASHINGTON, D.C. 20036-5304 |
RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom106@uspto.gov
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MARK: SPRINKLER PAC
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CORRESPONDENT’S REFERENCE/DOCKET NO: 87321-696
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 76/539095
The assigned examining attorney has reviewed the referenced application and determined the following.
The examining attorney refuses registration on the Principal Register because the proposed mark merely describes the goods. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §§1209 et seq.
The mark sprinkler pac merely describes a feature of the sprinkler fire control pac that contains a fire control panel, strobe lights and fire alarms.
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).
A term is suggestive if some imagination, thought or perception is required to determine the nature of the goods/services from the term. A suggestive term differs from a descriptive term, which immediately tells something about the goods/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 fact that an applicant may be the first and only user of a merely descriptive or generic designation does not justify registration if the term is merely descriptive. In re National Shooting Sports Foundation, Inc., 219 USPQ 1018 (TTAB 1983). TMEP §1209.03(c).
Please note that the mark in an application under Trademark Act Section 1(b), 15 U.S.C. §1051(b), is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use under 37 C.F.R. §2.76 or statement of use under 37 C.F.R. §2.88 has been timely filed. 37 C.F.R. §2.47(c); TMEP §815.02, 816.02 and 1102.03. When such an application is changed from the Principal Register to the Supplemental Register, the effective filing date of the application is the date of filing of the allegation of use. 37 C.F.R. §2.75(b); TMEP §§206.01 and 816.02.
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 requirement.
In the identification of goods prior to “fire control panel” insert “fire prevention equipment comprising.” Amendatory action is required.
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).
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 goods that are not within the scope of goods set forth in the present identification.
The applicant must submit literature to permit proper consideration of the application. 37 C.F.R. §2.61(b); TMEP §§814 and 1402.01(d).
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.
/John C. Tingley/
Trademark Examining Attorney
Law Office 106
703-308-9106 x-266 fax 703 746 8106
6:30 a.m. to 3:00 p.m
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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.