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  76/540092

 

The assigned examining attorney has reviewed the referenced application and determined the following.

 

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. Section 1052(d).  TMEP section 704.01.

 

Registration Refused – Does Not Function as a Trademark – Identifies a Character

 

Registration is refused because the proposed mark, as used on the specimen, solely identifies a particular character and does not function as a trademark for the identified goods.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051, 1052 and 1127.  The name of a character is registrable as a trademark only where the record shows that it is used in a manner that would be perceived by consumers as identifying the goods in addition to the character.  In re Caserta, 46 USPQ2d 1088 (TTAB 1988); See In re D.C. Comics, Inc. 689 F.2d 1042, 215 USPQ 394 (C.C.P.A. 1982) and Paramount Pictures Corporation v. Romulan Invasions, 7 USPQ2d 1897 (TTAB 1988).

 

The proposed mark is MUN HED, the goods are “printed materials, namely, children’s books and comic books, and the specimen comprises the cover and pages from a comic book.  According to the specimen, the proposed mark is being used only as the name of a character who is featured in the comic book and not as a trademark for the goods because the mark would not be perceived by consumers as identifying goods, in addition to identifying the character.

 

Registration Refused - Mark is Merely Descriptive

 

The examining attorney also refuses registration on the Principal Register because the proposed mark merely describes the goods.  Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1); TMEP section 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.  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 section 1209.01(b).

 

Here, the applicant seeks registration of the mark MUN HED for “printed materials, namely, children’s books and comic books.”  The wording MUN HEAD or MOON HEAD describes a feature of the comic books in that the primary character’s HEAD is in the design of a MOON as evidenced by the specimen of use.  A novel spelling of a merely descriptive term is also merely descriptive if purchasers would perceive the different spelling as the equivalent of the descriptive term.  Andrew J. McPartland, Inc. v. Montgomery Ward & Co., Inc., 164 F.2d 603, 76 USPQ 97 (C.C.P.A. 1947), cert. denied, 333 U.S. 875,77 USPQ 676 (S. Ct. 1948) (“KWIXTART,” phonetic spelling of “quick start,” is descriptive of electric storage batteries); In re Hercules Fasteners, Inc., 203 F.2d 753, 97 USPQ 355(C.C.P.A. 1953) (“FASTIE,” as phonetic spelling of “fast tie,” connotes that which unites or joins quickly, and hence thee the notation is descriptive of the function and character of tube sealing machines); ; C-Thru Ruler Co. v. Needleman, 190 USPQ 93 (E.D. Pa. 1976) (C-THRU held to be the equivalent of “see-through” and therefore merely descriptive of transparent rulers and drafting aids); In re Hubbard Milling Co., 6 USPQ2d 1239 (TTAB 1987) (MINERAL-LYX held generic for mineral licks for feeding livestock); In re State Chemical Manufacturing Co., 225 USPQ 687 (TTAB 1985) (“FOM,” equivalent to word “foam,” is descriptive for foam rug shampoo); TMEP §1209.03(j).

 

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.

 

Informality

 

If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informality.

 

Translation of Mark

 

If the mark consists of any foreign wording, the applicant must submit an English translation of the wording.  37 C.F.R. Section 2.61(b); TMEP section 809.

No set form is required for response to this Office action.  The applicant must respond to each point raised.  The applicant should simply set forth the required changes or statements and request that the Office enter them.  The applicant must sign the response.  In addition to the identifying information required at the beginning of this letter, the applicant should provide a telephone number to speed up further processing.

 

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

 

 

/Elizabeth Pignatello/

Trademark Examining Attorney

Law Office 105

(703) 308-9105 Ext. 224

(703) 872-9825 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.