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  76/550881

 

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

NO CONFLICTING MARKS

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 1105.01.

2(e)(1) MERELY DESCRIPTIVE REFUSAL

The examining attorney refuses registration on the Principal Register because the proposed mark “UNFILTERED” merely describes one of the features of the services. Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1); TMEP section 1209 et seq.

The examining attorney must consider whether a mark is merely descriptive in relation to the identified services, not in the abstract.  In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978); In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985).

Applicant’s services are production and distribution of television programming.  The programming in question is unfiltered.  Therefore, applicant’s mark is merely descriptive of the services.

The examining attorney encloses trademark evidence in the nature of excerpts from the internet to show that there is such a thing as an "UNFILTERED" programming and that therefore, the mark is descriptive of the services.

The Trademark Trial and Appeal Board has held that materials obtained through computerized text searching are competent evidence to show the descriptive use of terms under Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1).  In re National Data Corp., 222 USPQ 515, 517 n.3 (TTAB 1984).

Therefore, for the reasons stated above, registration is refused under section 2(e)(1) of the Trademarks Act.

REQUIREMENT FOR PARTICULAR INFORMATION

The applicant must submit a response to the following questions in order to permit proper consideration of the application.  37 C.F.R. Section 2.61(b); TMEP sections 1103.04 and 1105.02.

Are the programming services unfiltered?

What is the meaning of the mark when used in connection with the services?

What does applicant’s mark stand for?

 

CANNOT AMEND TO THE SUPPLEMENTAL REGISTER

Please note that the mark in an application under Trademark Act Section 1(b), 15 U.S.C. Section 1051(b), is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use under 37 C.F.R. Section 2.76 or statement of use under 37 C.F.R. Section 2.88 has been timely filed.  37 C.F.R. Section 2.47(c); TMEP section 1105.01(a)(vii). When such an application is changed from the Principal Register to the Supplemental Register, the effective filing date of the application is the date of filing of the allegation of use.  37 C.F.R. Section 2.75(b); TMEP section 708.01.

 

The applicant failed to submit an Amendment to Allege Use.  Therefore, it must follow the following steps.

 

The applicant must:

1)      file an amendment to allege use;

2)      include the prescribed fee for an AAU.  37 C.F.R. §2.76(b)(3).  The fee for filing an amendment to allege use is $100.00 per class.  37 C.F.R. §2.6(a)(2); TMEP §1104.09(g), and

3)      submit a specimen for any goods identified in the application. The applicant must submit one specimen showing use of the mark for the goods specified.  37 C.F.R. Sections 2.56, 2.58 and 2.76(b)(2).  The applicant must verify, with an affidavit or a declaration under 37 C.F.R. Section 2.20 that the specimens are in use in commerce. 37 C.F.R. Section 2.59(b); TMEP section 905.10.

 

The applicant must verify, with an affidavit or a declaration under 37 C.F.R. §2.20, that the applicant used the substitute specimen in commerce prior to filing the amendment to allege use.  37 C.F.R. §2.59(b)(1).    

 

NOTE FOR ELECTRONIC RESPONSES

 

Any communications regarding pending applications sent via e-mail to any of the law office e-mail addresses must:

 

(1)  be in English;

(2)            include the entire response as e-mail text, not as an attachment;

(3)  list the serial number in the "Subject" line; and

(4)  include any specimens or evidence in jpg or gif format only.

 

For security and compatibility reasons, the Office will not accept communications that include any attachments, other than those in jpg or gif format.  Thus, no attachments in WordPerfect®, Word, Adobe® PDF or any other format EXCEPT jpg or gif can be accepted. 

 

Additionally, all such communications sent via e-mail should (1) be signed electronically (using the same format accepted for electronically-filed applications, namely, the signatory must enter any combination of alpha/numeric characters that has been specifically adopted to serve the function of the signature, preceded and followed by the forward slash (/) symbol.  Acceptable "signatures" could include: /john doe/; /jd/; and /123-4567/.  (See 64 FR 33056, 33062 (June 21, 1999))); and (2) address every issue raised.  Failure to comply with these additional requirements will result in delays in prosecuting your application.

 

NOTE REGARDING TIMELY FILING OF RESPONSES

 

The statutory period for response to an Office action during examination is six months.  15 U.S.C. §1062(b).  The examining attorney does not have any discretion to shorten or extend such period. 

 

The crucial date for the response is the date it is received by the Office, not the date it is mailed by the applicant.  The applicant should see 37 C.F.R. §§1.8 and 1.10; TMEP §§702.02, 702.03 and 702.04(f), regarding certificate of mailing, certificate of transmission and "Express Mail" procedures to avoid lateness.

 

NOTE REGARDING STATUS OF APPLICATION

 

Current status and status date information is available on-line at http://tarr.gov.uspto.report/ or, via push button telephone, for all federal trademark registration and application records maintained in the automated Trademark Reporting and Monitoring (TRAM) system.  The information may be accessed by calling (703) 305-8747 from 6:30 a.m. until midnight, Eastern Time, Monday through Friday, and entering a seven-digit registration number or eight-digit application number, followed by the "#" symbol, after the welcoming message and tone.  Callers may request information for up to five registration number or application number records per call.

 

Should the applicant elect to respond to this office action, then, it should also address the following informalities.

 

ENTITY - CLARIFICATION IS NECESSARY

 

The applicant's application is listed under the name of an entity but further down in the application where the entity type is requested the applicant did not check anything and did not submit the state of incorporation, if an entity, or the citizenship, if an individual.  The applicant must provide the type of entity and the citizenship of that entity.  37 C.F.R. Section 2.33(a)(1)(ii); TMEP section 802.03.

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

 

 

FBlandu

Trademark Attorney

/florentina blandu/

l.0.112

tel (703) 308-9112 ext. 104

fax (703) 872-9173

florentina.blandu@uspto.gov (for informal communications only)

 

 

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.