UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

FINAL ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

Serial Number  76/539893 – OPERATIONS ADVISOR

 

This letter responds to the applicant's communication filed on March 27, 2006.  The examining attorney has carefully reviewed the applicant’s arguments and amendments in favor of registration and has determined the following.

 

Disclaimer

The applicant has filed both an acceptable amendment to allege use and an amendment to seek registration on the Supplemental Register.  Because the applicant has amended the drawing to OPERATIONS ADVISOR, the Office requires the applicant to submit a disclaimer of ADVISOR because this wording is generic in the context of applicant’s services. 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(b). 

 

The applicant argues that the term ADVISOR is not generic because it denotes neither a computer database, consulting services, health care informatics nor supply chain management.  The examining attorney has carefully considered the applicant’s arguments but has found them to be unpersuasive for the following reasons.

 

Third-party registrations are not conclusive on the question of descriptiveness.  Each case must be considered on its own merits.  A proposed mark that is merely descriptive does not become registrable simply because other similar marks appear on the register.  In re Scholastic Testing Service, Inc., 196 USPQ 517 (TTAB 1977); TMEP §1209.03(a).

 

The applicant has amended the application to seek registration of the mark OPERATIONS ADVISOR on the Supplemental Register for use in connection with “Consulting services in the field of supply chain management; providing an on-line computer database in the fields of health care cost, accounting, labor assessment and operational productivity data” and “providing an on-line computer database in the fields of health care informatics; consulting services in the field of healthcare informatics.”

 

The term ADVISOR is defined as follows:

 

ad·vis·or

 
ad·vis·er or  ad·vi·sor (àd-vì¹zer) noun

1.  One that advises, such as a person or firm that offers official or professional advice to clients.[1]

 

The term CONSULTANT is defined as follows:

 

con·sult·ant

 
con·sult·ant (ken-sùl¹tent) noun

1.    One that gives expert or professional advice.

2.  One that consults another.[2]

 

The above definitions illustrate that the terms ADVISOR and CONSULTANT are synonyms.  The applicant provides the services of an advisor and/or a consultant.  Also, attached to this Final Action are copies of third party registrations which illustrate the generic nature of the term ADVISOR in relation to consulting services. 

A properly worded disclaimer should read as follows:

 

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

The requirement for a disclaimer is maintained and made FINAL.

 

Proper Response to Final Action

Please note that the only appropriate responses to a final action are (1) compliance with the outstanding requirements, if feasible, (2) filing of an appeal to the Trademark Trial and Appeal Board, or (3) filing of a petition to the Director if permitted by 37 C.F.R. §2.63(b). 37 C.F.R. §2.64(a); TMEP §715.01.  Regarding petitions to the Director, see 37 C.F.R. §2.146 and TMEP Chapter 1700.  If the applicant fails to respond within six months of the mailing date of this refusal, this Office will declare the application abandoned.  37 C.F.R. §2.65(a). 

Telephone for Assistance

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

 

 

/Alicia P. Collins/

Trademark Examining Attorney

U.S. Patent and Trademark Office

Law Office 115

(571) 272-9147

(571) 273-9147 (fax)

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above, and include the serial number, law office number, and examining attorney’s name.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.