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  76/548644

 

This letter responds to the applicant’s amended response filed on November 18, 2004. The identification of goods and services is acceptable. The claim of prior registration is accepted. The finding of mere descriptiveness is maintained and continued at this time. The examining attorney requests that the applicant disclaim the wording CHEERLEADING as this is certainly descriptive for both the goods and services in the application. Since this is technically a new issue, this NON-FINAL ACTION is sent. The applicant has failed to submit any information concerning the applicant’s goods and services. This requirement is reprinted below.

 

Disclaimer Required

The applicant must disclaim the descriptive wording “CHEERLEADING” apart from the mark as shown. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a).  The wording is merely descriptive because the applicant is providing cheerleading clothing and services in relation to cheerleading. Please see the small sample of websites showing various cheerleading apparel.

 

cheer·lead (chîr¹lêd´) verb, intransitive

cheer·led (-lèd´) cheer·lead·ing, cheer·leads

1.    To lead organized cheering, as at sports events.

2.    To express or promote automatic or servile praise: We want someone not just to cheerlead but to help us revamp our organization.

The American Heritage® Dictionary of the English Language, Third Edition copyright © 1992 by Houghton Mifflin Company.

Trademark Act Section 6(a), 15 U.S.C. §1056(a), permits the Office to require a disclaimer of an unregistrable component of a mark.  Trademark Act Section 2(e), 15 U.S.C. §1052(e), bars the registration of a mark which is merely descriptive or deceptively misdescriptive, or primarily geographically descriptive of the goods. Therefore, the examining attorney may require the disclaimer of a portion of a mark which, when used in connection with the goods or services, is merely descriptive or deceptively misdescriptive, or primarily geographically descriptive.  If an applicant does not comply with a disclaimer requirement, the examining attorney may refuse registration of the entire mark.  TMEP §1213.01(b).

 

A properly worded disclaimer should read as follows:

 

No claim is made to the exclusive right to use CHEERLEADING apart from the mark as shown.

 

A disclaimer does not remove the disclaimed matter from the mark.  It is simply a statement that the applicant does not claim exclusive rights in the disclaimed wording or design apart from the mark as shown in the drawing.

 

Requirement for Information

The examining attorney requires information about the goods/services in order to make a final determination as to whether all or part of the mark is merely descriptive as applied to the goods/services.  37 C.F.R. §2.61(b); TMEP §§814 and 1402.01(d). The applicant must provide product information for the goods/services.  This may take the form of a fact sheet, instruction manual, or advertisement.  If unavailable, the applicant should submit the information for goods/services of the same type, explaining how its own product will differ.  If the goods/services feature new technology and no competing goods/services are available, the applicant must provide a detailed factual description of the goods/services  Please specifically indicate if the applicant is conducting cheerleading competitions on a world scale.

In all cases, the submitted factual information must make clear how the goods/services operate, its salient features, and its prospective customer and/or channel of trade.  This information is not readily available to the examining attorney, and is pertinent to the descriptiveness determination.  Conclusory statements from the applicant or its attorney regarding the descriptiveness standard will not be sufficient to meet this requirement for information.

Trademark Rule 2.61(b) states "The examiner may require the applicant to furnish such information and exhibits as may be reasonably necessary to the proper examination of the application".  The Trademark Trial and Appeal Board has upheld a refusal of registration based on the applicant's failure to provide information requested under this rule.  In re Babies Beat Inc., 13 USPQ2d 1729 (TTAB 1990)(failure to submit patent information regarding configuration). 

 

Supplement Register Possible Provided Proper Amendment to Allege Use Filed

Although the examining attorney has refused registration on the Principal Register, the applicant may amend the application to seek registration on the Supplemental Register.  Trademark Act Section 23, 15 U.S.C. §1091; 37 C.F.R. §§2.47 and 2.75(a); TMEP §§801.02(b), 815 and 816 et seq.

 

Please Note: An application filed under Trademark Act Section 1(b), 15 U.S.C. §1051(b), on the basis of a bona fide intent to use the mark in commerce, may not be amended to the Supplemental Register until the applicant files an acceptable amendment to allege use under 37 C.F.R. §2.76 or an acceptable statement of use under 37 C.F.R. §2.88.  37 C.F.R. §2.47(c); TMEP §§815.02, 816.02 and 1102.03.

 

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

 

NOTICE:  TRADEMARK OPERATION RELOCATION

 

The Trademark Operation has relocated to Alexandria, Virginia.  Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:

 

Commissioner for Trademarks

P.O. Box 1451

Alexandria, VA  22313-1451

 

Applicants, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at http://www.gov.uspto.report/teas/index.html.

 

 

/srb/

Steven R. Berk

Examining Attorney

Law Office 102

(571)272-9246 (phone)

(571)273-9246 (fax)

 

 

How to respond to this Office Action:

 

You may respond formally using the Office's Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://eteas.gov.uspto.report/V2.0/oa242/WIZARD.htm and follow the instructions therein, but you must wait until at least 72 hours after receipt if the office action issued via e-mail).  PLEASE NOTE: Responses to Office Actions on applications filed under the Madrid Protocol (Section 66(a)) CANNOT currently be filed via TEAS.

 

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.