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  76/549562

 

The assigned trademark examining attorney has reviewed the referenced application filed on 10/7/03, and has determined the following.

 

Search Results

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.

 

Refusal to Register – Mark is Merely Descriptive

The examining attorney refuses registration on the Principal Register because the proposed mark merely describes the goods.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §§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 and/or services.  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 §1209.01(b).  A mark that describes an intended user of a product or service is also merely descriptive within the meaning of Section 2(e)(1).  Hunter Publishing Co. v. Caulfield Publishing Ltd., 1 USPQ2d 1996 (TTAB 1986); In re Camel Mfg. Co., Inc., 222 USPQ 1031 (TTAB 1984); In re Gentex Corp., 151 USPQ 435 (TTAB 1966).

 

The applicant has applied to register the mark “MICROBRUSH” for “liquid applicator in the field of medical devices.”

 

The prefix MICRO is relevantly defined as: a. Small: microcircuit. b. Abnormally small: microcephaly.[1] The word BRUSH is relevantly defined as: a. A device consisting of bristles fastened into a handle, used in scrubbing, polishing, or painting. b. The act of using this device.[2]

 

The applicant provides goods/services in the nature of what the mark states.

 

The fact that an applicant may be the first and sole user of a merely descriptive or generic designation does not justify registration where the evidence shows that the term is merely descriptive of the identified goods and/or services.  In re Acuson, 225 USPQ 790 (TTAB 1985) (COMPUTED SONOGRAPHY descriptive of ultrasonic imaging instruments); In re National Shooting Sports Foundation, Inc., 219 USPQ 1018 (TTAB 1983) (SHOOTING, HUNTING, OUTDOOR TRADE SHOW AND CONFERENCE held apt descriptive name for conducting and arranging trade shows in the hunting, shooting and outdoor sports products field); TMEP §1209.03(c).

 

A visit to the applicant’s website [www.microbrush.com] bolsters the descriptive nature of the applicant’s mark. The applicant provides small brush applicators for various industries. 

 

The dictionary definitions demonstrate that the composite wording MICROBRUSH is merely descriptive of the nature, quality, characteristic, feature or use of the relevant goods. Accordingly, the mark is refused registration under section 2(e)(1).

 

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. If applicant chooses to respond to the refusal(s) to register, then applicant must also respond to the following requirement(s):

 

Section 2(f) Suggested – Distinctiveness Based on Prior Registration

Applicant may seek Principal Register registration under Trademark Act Section 2(f), 15 U.S.C. §1052(f), by claiming acquired distinctiveness through ownership of U.S. Registration 2219003.  To do so, applicant must submit the following statement, if accurate:

 

The wording MICROBRUSH mark has become distinctive of the goods and/or services as evidenced by ownership of U.S. Registration 2219003 on the Principal Register for the same mark for related goods or services.  37 C.F.R. §2.41(b); TMEP §§1212.04 et seq.

 

Identification of Goods

The wording “liquid applicator in the field of medical devices” is unacceptable and needs clarification because the exact goods and/or its specific use are unclear. TMEP §1402.01. The identification of goods must be specific.  Applicant should amend the identification identify the specific area/field and describe the type of liquid being applied. Applicant may change this wording to the following, if accurate:

 

Class 10:                        Liquid applicator use with medical devices for dispensing and spreading medicines or treatments.

 

Or

 

Class 10:                        Medical devices, namely, liquid applicators for dispensing and spreading medicines or treatments.

 

Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.

 

For assistance with identifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.

 

 

 

/R.L.F./

Ronald L. Fairbanks

Trademark Attorney,

Law Office 112

(703) 308-9112, ext. 137

ecom112@uspto.gov

 

 

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 E-mail, visit http://www.gov.uspto.report/web/trademarks/tmelecresp.htm 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.