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  76/548459 CHROME

 

The assigned trademark examining attorney has reviewed the referenced application filed on October 2, 2003, and has determined the following.

 

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.

 

REGISTRATION IS REFUSED:  Proposed Mark Is Deceptively Misdescriptive

 

Registration is refused because the proposed mark is deceptively misdescriptive of applicant’s goods.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §1209.04.

 

A mark is deceptively misdescriptive if it describes an ingredient, quality, characteristic, function or feature of the relevant goods, and the description conveyed by the mark is both false and plausible.  In re Woodward & Lothrop Inc., 4 USPQ2d 1412 (TTAB 1987) (CAMEO held deceptively misdescriptive of jewelry); In re Ox‑Yoke Originals, Inc., 222 USPQ 352 (TTAB 1983) (G.I. held deceptively misdescriptive of gun cleaning patches, rods, brushes, solvents and oils); TMEP §1209.04.

 

The test for deceptive misdescriptiveness has two parts:  (1) does the mark misdescribe a characteristic, quality, function, composition or use of the goods or services; and (2) would consumers be likely to believe the misrepresentation.  See In re Berman Bros. Harlem Furniture Inc., 26 USPQ2d 1514 (TTAB 1993); In re Woodward & Lothrop Inc., 4 USPQ2d 1412 (TTAB 1987); In re Quady Winery, Inc., 221 USPQ 1213 (TTAB 1984).

 

In this case, the applicant has applied to register the mark CHROME for protective sleeving for cables, wires and tubes.  The term CHROME is defined as “chromium or a chromium alloy; or something plated with a chromium alloy.  See the attached dictionary definition.  The mark misdescribes the composition of the goods because the goods are made of a metallized polyester film and clear polyethylene terepthalate [a form of polyester].  See specimen of record submitted by the applicant.  Because the goods are not made of chrome, the proposed mark misdescribes the goods.  Furthermore, consumers are likely to believe that the goods are made of chrome because chrome sleeves are commonly sold in the marketplace for a variety of uses.  See attached documents found on Google.com containing references to “chrome sleeves.”  Thus, the proposed mark  is deceptively misdescriptive of applicant’s goods. 

 

For the foregoing reasons, registration of the proposed mark is refused. 

 

NOTE:  Marks that have been refused registration pursuant to §2(e)(1) on the ground of deceptive misdescriptiveness may be registrable under §2(f) upon a showing of acquired distinctiveness, or on the Supplemental Register.  15 U.S.C. §§1052(f) and 1091. 

 

Although the trademark examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.  If applicant chooses to respond to the refusal to register, then applicant must also respond to the following requirements. 

 

Inquiry of Significance

 

The applicant must indicate whether the wording "CHROME" has any significance in the relevant trade or industry or as applied to the goods.  37 C.F.R. Section 2.61(b).

 

Requirement for Additional Information

 

The nature of the goods on which the applicant uses the mark is not clear from the present record.  The applicant must submit samples of advertisements or promotional materials.  If such materials are not available, the applicant must submit a photograph of the goods and describe their nature, purpose and channels of trade.  37 C.F.R. §2.61(b); TMEP §§814 and 1402.01(d).   Specifically, the applicant must submit information regarding the composition of the goods, i.e. the goods made out of chrome.

 

 

 

 

Response Guidelines

 

Please note: If the applicant submits a response electronically, an electronic signature is required.  An applicant, registrant or attorney may sign an electronic communication by entering a “symbol” that he or she has adopted as a signature between two slashes.  In addition, the Office will accept an electronic communication containing the “/s/” (“/(signature)/”) notation in lieu of a signature.  A scanned image of a document signed in ink is also acceptable, as long as the image is attached in .jpg or .gif format.  TMEP  Section 304.08.           

 

 

 

 

 

 

/daniellemattessich/

Danielle I. Mattessich

Trademark Attorney, Law Office 106

Tel:  (703) 308-9106 Ext. 261

Fax:  (703) 746-8106

 

 

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.

chrome

 
chrome (krom) noun

1.   a. Chromium or a chromium alloy. b. Something plated with a chromium alloy.

2.   A pigment containing chromium.

 

verb, transitive

chromed, chrom·ing, chromes

1.   To plate with chromium.

2.   To tan or dye with a chromium compound.

 [French, from Greek khroma, color (from the brilliant colors of chromium compounds).][1]