UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.

 

ISSUE/MAILING DATE: 6/24/2009

 

This responds to the letter received June 17,2009. After careful consideration the following action is taken regarding the applicant’s request to Amend to the Supplemental Register:

 

Registration is refused on the Supplemental Register because the applied-for mark is generic for applicant’s goods.  Trademark Act Section 23(c), 15 U.S.C. §1091(c); see In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987) (holding SCREENWIPE generic as applied to premoistened antistatic cloths for cleaning computer and television screens); In re Northland Aluminum Prods., Inc., 777 F.2d 1556, 227 USPQ 961 (Fed. Cir. 1985) (holding BUNDT, a term that designates a type of cake, generic for ring cake mix); In re Cent. Sprinkler Co., 49 USPQ2d 1194 (TTAB 1998) (holding ATTIC generic for sprinklers installed primarily in attics); In re Stanbel, Inc., 16 USPQ2d 1469 (TTAB 1990) (holding ICE PAK generic for reusable ice substitute for use in food and beverage coolers); TMEP §§1209.01(c) et seq.

 

A word or term does not need to be a noun to be generic.  See In re Reckitt & Coleman, N. Am. Inc., 18 USPQ2d 1389, 1390-91 (TTAB 1991) (holding PERMA PRESS generic for soil and stain removers for use on permanent press products); Miller Brewing Co. v G. Heileman Brewing Co., 561 F.2d 75, 80, 195 USPQ 281, 285 (7th Cir. 1977) (holding LITE generic for beer); TMEP §1209.01(c)(ii).

 

A word or term that is the name of a key ingredient, characteristic or feature of the goods and/or services can be generic for those goods and/or services and thus, incapable of distinguishing source.  A term does not need to be the name of the goods and/or services to be found incapable of serving as an indicator of origin.  In re Sun Oil Co., 426 F.2d 401, 165 USPQ 718 (C.C.P.A. 1970) (holding CUSTOM BLENDED generic for gasoline); In re Helena Rubenstein, Inc., 410 F.2d 438, 161 USPQ 606 (C.C.P.A. 1969) (holding PASTEURIZED generic for face cream); Roselux Chem. Co. v. Parsons Ammonia Co., 299 F.2d 855, 132 USPQ 627 (C.C.P.A. 1962) (holding SUDSY generic for ammonia); In re Eddie Z's Blinds & Drapery, Inc., 74 USPQ2d 1037 (TTAB 2005) (holding BLINDSANDDRAPERY.COM generic for online retail store services featuring blinds, draperies and other wall coverings); In re Candy Bouquet Int’l, Inc., 73 USPQ2d 1883 (TTAB 2004) (holding CANDY BOUQUET generic for “retail, mail, and computer order services in the field of gift packages of candy”); In re Reckitt & Colman, N. Am. Inc., 18 USPQ2d 1389 (TTAB 1991) (holding PERMA PRESS generic for soil and stain removers); In re Ricci-Italian Silversmiths, Inc., 16 USPQ2d 1727 (TTAB 1990) (holding ART DECO generic for flatware); In re Hask Toiletries, 223 USPQ 1254 (TTAB 1984) (holding HENNA ‘N’ PLACENTA generic of ingredients for hair conditioner); A.J. Canfield Co. v. Honickman, 808 F.2d 291, 1 USPQ2d 1364 (3d Cir. 1986) (holding CHOCOLATE FUDGE generic for diet sodas); see TMEP §§1209.01(c) et seq.

 

The applicant seeks to register the term BROADBEAM for floodlights for nonresidential and outdoor use. As previously stated, the specimen of record clearly indicates that the major feature of the applicant’s lighting goods is the ability to cast a broad beam of light, compared to other forms of outdoor lighting. Moreover, as previously indicated, at least four other manufacturers of such products use the identical term BROAD BEAM or BROAD LIGHT BEAM to identify a major or distinguishing feature of their goods, lighting products. Therefore, it would appear that such language would be required for use by others in the lighting industry, to identify a major feature which is sought by consumers.

 

Therefore, it would appear that the term BROADBEAM   is generic in identifying a feature of the goods, floodlights.

 

A “compound mark,” which consists of two or more words combined to create a single word, is generic if the individual words are generic and retain their generic meaning within the compound mark.  In re Gould Paper Corp., 834 F.2d 1017, 1018-19, 5 USPQ2d 1110, 1111-12 (Fed. Cir. 1987) (holding SCREENWIPE generic for computer and television screen cleaning cloths); Cummins Engine Co. v. Cont’l Motors Corp., 359 F.2d 892, 894-95, 149 USPQ 559, 561 (C.C.P.A. 1966) (holding TURBODIESEL generic for internal combustion engines); Turtle Wax, Inc. v. Blue Coral, Inc., 2 USPQ2d 1534, 1536 (TTAB 1987) (holding WASHWAX generic for car washing concentrate that leaves a wax-like coating); TMEP §1209.01(c)(i).

 

For these reasons, registration is refused on the Supplemental Register on grounds that the term sought to be registered generically describes a characteristic of the goods, and such terminology is consistently used in this manner by other manufacturers of lighting products to identify the same characteristic—projecting a broad beam of light—such that registration is refused under the provisions of Sections 1,2,3 and 45 of the Trademark Act.

 

 

 

Henry S. Zak

/Henry S. Zak/

Examining Attorney

Law Office 117

(571) 272-9354

 

 

RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.gov.uspto.report/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail.  For technical assistance with the form, please e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned examining attorney.  Do not respond to this Office action by e-mail; the USPTO does not accept e-mailed responses.

 

If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response.  Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.

 

STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov.  When conducting an online status check, print and maintain a copy of the complete TARR screen.  If the status of your application has not changed for more than six months, please contact the assigned examining attorney.

 

 

 

 

 

                                                                

IMPORTANT NOTICE

USPTO OFFICE ACTION HAS ISSUED ON 6/24/2009 FOR

APPLICATION SERIAL NO. 76545496

 

Please follow the instructions below to continue the prosecution of your application:

  

VIEW OFFICE ACTION: Click on this link http://tmportal.gov.uspto.report/external/portal/tow?DDA=Y&serial_number=76545496&doc_type=OOA&mail_date=20090624 (or copy and paste this URL into the address field of your browser), or visit http://tmportal.gov.uspto.report/external/portal/tow and enter the application serial number to access the Office action.

 

PLEASE NOTE: The Office action may not be immediately available but will be viewable within 24 hours of this notification.

 

RESPONSE MAY BE REQUIRED: You should carefully review the Office action to determine (1) if a response is required; (2) how to respond; and (3) the applicable response time period. Your response deadline will be calculated from 6/24/2009.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System response form at http://www.gov.uspto.report/teas/eTEASpageD.htm.

 

HELP: For technical assistance in accessing the Office action, please e-mail

TDR@uspto.gov.  Please contact the assigned examining attorney with questions about the Office action. 

 

        WARNING

1. The USPTO will NOT send a separate e-mail with the Office action attached.

 

2. Failure to file any required response by the applicable deadline will result in the ABANDONMENT of your application.