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  76/550977

 

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

 

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

 

A.                No Conflicting Marks Noted

 

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.

 

B.                 Partial Refusal – Mark Identifies a Process

 

With respect to the applicant’s “processes” only, registration is refused because the proposed mark, as identified in the identification of goods, merely identifies a process and would not be perceived as a trademark for the goods identified in the application.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051, 1052 and 1127.  See In re Griffin Pollution Control Corp., 517 F.2d 1356, 186 USPQ 166 (C.C.P.A. 1975); Congoleum Corp. v. Armstrong Cork Co., 218 USPQ 528, 535 n.13 (TTAB 1983); In re Big Stone Canning Co., 169 USPQ 815 (TTAB 1971).

 

In this case, the applicant specifically states that it is, in part, seeking registration of the mark for “processes.”  Thus, the mark clearly identifies, in part, a process.

 

Where a term is used solely to identify a process, style, method, system, or the like, it is not registrable as a trademark.  A process or system is only a way of doing something, and does not generally constitute a marketable or tangible product.  The name of a system or process does not function as a trademark unless it is also used to identify and distinguish the goods listed in the application, and to indicate the source of those goods.  The determination of whether matter functions solely as the name of a system or process and also as a trademark is based on a consideration of the manner in which the proposed mark is used, as evidenced by the specimen and any other information of record.  See In re Griffin Pollution Control Corp., 517 F.2d 1356, 186 USPQ 166 (C.C.P.A. 1975) (OXINITE held not to function as a trademark for a gas mixture because, based on the specimens of record, consumers would associate the mark only with a water treatment process and not with the identified goods); See also TMEP §1301.02(e).

 

Applicant may respond to this refusal by deleting the term “processes” from its identification of goods.  If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informalities.

 

C.                Disclaimer

 

The applicant must disclaim the descriptive wording "DETECTION DIAGNOSIS TREATMENT" apart from the mark as shown. Trademark Act Section 6, 15 U.S.C. Section 1056; TMEP sections 1213 and 1213.02(a).  The wording is merely descriptive because it immediately identifies three functions or purposes of the goods.

 

The computerized printing format for the Trademark Official Gazette requires a standard form for a disclaimer.   TMEP section 1213.09(a)(i).  A properly worded disclaimer should read as follows:

 

            No claim is made to the exclusive right to use DETECTION DIAGNOSIS TREATMENT apart from the mark as shown.

 

See In re Owatonna Tool Co., 231 USPQ 493 (Comm'r Pats. 1983).

 

D.                Identification of Goods

 

The identification of goods is unacceptable as indefinite because applicant must identify each “apparatus,” “device” and “product” for which registration is sought by its common commercial name and appropriate international classification.  TMEP section 804. 

 

The applicant must rewrite the identification in its entirety, listing each good or service according to its appropriate international classification, with the international classes listed in ascending order.  37 C.F.R. Section 2.74(b).  Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. Section 2.71(a); TMEP section 804.09.  Therefore, the applicant may not amend to include any goods or services that are not within the scope of the goods or services listed in the present identification.

 

E.                 Additional Fees May Be Required

 

As discussed above, the application identifies goods that may be classified in several international classes.  Therefore, the applicant must either:  (1) restrict the application to the number of classes covered by the fee already paid, or (2) pay the required fee for each additional class.  37 C.F.R. Section 2.86(a)(2); TMEP sections 810.01 and 1113.01. 

 

F.                 Drawing Unacceptable

 

The drawing is not acceptable because it will not reproduce satisfactorily.  The applicant must submit a new drawing showing the mark clearly and conforming to 37 C.F.R. Section 2.52. TMEP section 807.05.

 

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

 

                                                                        Regards,

 

 

/Scott M. Oslick/

Trademark Examining Attorney

Law Office 108

(703) 308-9108 x117 (Telephone)

(703) 746-8108 (Fax - Official Responses 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.