Priority Action

UNITED STATES PATENT AND TRADEMARK OFFICE

 

PRIORITY ACTION

 

OFFICE SEARCH:  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 704.02. 

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE.  This case will be given priority as an amended case if you respond to the requirements stated below within two months.

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.

 

Serial Number  76/556693

 

The following issues were discussed in a communication to Ronald P. Kananan on 5-10-04.

 

DISCLAIMER REQUIREMENT

 

Applicant must disclaim the descriptive wording “RECYCLE” apart from the mark as shown because it merely describes a feature, characteristic, purpose, function, of applicant’s goods and/or services.  Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a). Applicant’s description of services begins with “Promoting, encouraging, and facilitating the recycling of cans and plastic…” Thus “RECYCLE” describes the subject or topic of applicant’s promotional services. “RECYCLE” is defined in the attached excerpt from The Americans Heritage Dictionary of the English Language, Third Edition, as follows: “To use again, especially to reprocess: recycle aluminum cans; recycle old jokes.”  Thus applicant’s mark is an exhortation to the public to recycle soda cans and plastic bottles and containers. The mark tells the reader the general nature of applicant’s services, i.e. what they are about.

 

The Office can require an applicant to disclaim exclusive rights to an unregistrable part of a mark, rather than refuse registration of the entire mark.  Trademark Act Section 6(a), 15 U.S.C. §1056(a).  Under Trademark Act Section 2(e), 15 U.S.C. §1052(e), the Office can refuse registration of the entire mark where it is determined that the entire mark is merely descriptive, deceptively misdescriptive, or primarily geographically descriptive of the goods.  Thus, the Office may require the disclaimer of a portion of a mark which, when used in connection with the goods or services, is merely descriptive, deceptively misdescriptive, primarily geographically descriptive, or otherwise unregistrable (e.g., generic).  TMEP §1213.03(a).  If an applicant does not comply with a disclaimer requirement, the Office may refuse registration of the entire mark.  TMEP §1213.01(b).

 

A “disclaimer” is thus a written statement that an applicant adds to the application record that states that applicant does not have exclusive rights, separate and apart from the entire mark, to particular wording and/or to a design aspect.  The appearance of the applied-for mark does not change.

 

The following cases explain the disclaimer requirement more fully:  Dena Corp. v. Belvedere Int’l Inc., 950 F.2d 1555, 21 USPQ2d 1047 (Fed. Cir. 1991); In re Kraft, Inc., 218 USPQ 571 (TTAB 1983); In re EBS Data Processing, Inc., 212 USPQ 964 (TTAB 1981); In re National Presto Industries, Inc., 197 USPQ 188 (TTAB 1977).

 

A disclaimer does not physically remove the disclaimed matter from the mark, but rather is a written statement that applicant does not claim exclusive rights to the disclaimed wording and/or design separate and apart from the mark as shown in the drawing.\

 

The computerized printing format for the Office’s Trademark Official Gazette requires a standardized format for a disclaimer.  TMEP §1213.08(a)(i).  The following is the standard format used by the Office:

 

No claim is made to the exclusive right to use “RECYLE” apart from the mark as shown.

 

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

 

THE SERVICES DESCRIPTION IS NOT SPECIFIC ENOUGH TO ADEQUATELY DESCRIBE THE SERVICES.

 

The wording  in the identification of services needs clarification because applicant’s promotional activities in the service of promoting recycling are not mentioned.  Applicant must amend this wording to specify the common commercial or generic name for the promotional services.  If there is no common commercial or generic name for the services, then applicant must describe the nature of the services as well as their main purpose, channels of trade, and the intended consumer(s).  TMEP §1402.01.

 

The examining attorney proposes the following format which may be adapted by applicant or made more accurate. “Promoting public awareness of the need for recycling metal soft drink cans and plastic (bottles, containers, whatever is accurate) by means of (television commercials, radio commercials, print advertisements, sponsorship of athletic or artistic competitions, a website on the Internet, rock concerts, newsletters, a coupon redemption program, whatever is accurate.)

 

Applicant must amend for greater specificity in conformity with the foregoing.

 

THE DRAWING IS UNACCEPTABLE.

 

Applicant must clarify whether the gray tones in the drawing are intended to indicate the color gray.

 

(1)   If the color gray is a feature of the mark, then applicant must submit a color claim and description as follows:  “The color gray is a feature of the mark.  The color gray appears in <specify where color gray appears>.”  37 C.F.R. §§2.52(b) and (b)(1).

 

(2)   If the color gray is intended to indicate shading only, then applicant must submit a new drawing showing the mark in black and white only, with the gray tones deleted.

 

IF GRAY IS OR IS NOT A FEATURE OF THE MARK, A NEW DRAWING IS STILL NEEDED BECAUSE THE PRESENT DRAWING IS NOT CLEAR

 

Applicant must submit a new drawing showing the entire mark clearly and conforming to 37 C.F.R. §2.52.  The current drawing is not acceptable because the outlines are blurred and the contrast is not sharp enough to reproduce satisfactorily.  TMEP §807.07(a).

 

The requirements for a special-form drawing are as follows:

 

·        The drawing must appear in black and white if color is not claimed as a feature of the mark, or in color if color is claimed as a feature of the mark.

 

·        Drawings must be typed or made with a pen or by a process that will provide high definition when copied.  A photolithographic, printer’s proof copy, or other high quality reproduction of the mark may be used.  All lines must be clean, sharp and solid, and must not be fine or crowded.

 

·        The image must be no larger than 3.15 inches (8 cm) high by 3.15 inches (8cm) wide.

 

·        If reduction of the mark to the required size renders any details illegible, then applicant may insert a statement in the application to describe the mark and these details.

 

37 C.F.R. §§2.52(b); See TMEP §§807.01(b) and 807.07(a).

 

If submitted on paper, the Office prefers that the drawing be depicted on a separate sheet of non-shiny, white paper that is 8 to 8.5 inches wide and 11 to 11.69 inches long (20.3 to 21.6 cm. wide and 27.9 to 29.7 cm. long).  One of the shorter sides of the sheet should be regarded as its top edge. In addition, the drawing should include the caption “DRAWING PAGE” at the top of the drawing beginning one-inch (2.5 cm) from the top edge.  37 C.F.R. §2.54.

 

The Office strictly enforces these drawing requirements.

 

DESCRIPTION OF THE MARK

 

The applicant must submit a concise description of the mark.  37 C.F.R. Section 2.35; TMEP section 808 et seq.  The statement may be in the following form:

 

            The mark consists of a horizontal row of soft drink cans against a shaded background, each can bearing a stylized letter across the front, spelling out the word “RECYCLE”.

 

EXPEDITED COMMUNICATIONS

 

The most expeditious way to resolve goods and services descriptions and disclaimer issues is by e-mail that allows for back-and-forth discussion between applicant and examining attorney. The examining attorney’s personal numbers are:

 

Tel. 703-308-9114 Ext. 433

Fax: 703-746-6267

E-Mail:  jill.alt@uspto.gov

 

In order to submit formal responses by E-Mail, applicant must give written consent to be an electronic correspondent and set forth its E-Mail address. The signature, to be valid, must be typed between two forward slashes, as below.

 

 

/Jill C. Alt/

Trademark Attorney

Law Office 114

Tel. (703) 308-9114 Ext.433

Fax: (703) 746-8114

 

 

 

 

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

 

re·cy·cle

 
re·cy·cle (rê-sì¹kel) verb, transitive

re·cy·cled, re·cy·cling, re·cy·cles

1.  To put or pass through a cycle again, as for further treatment.

2.  To start a different cycle in.

3.  a. To extract useful materials from (garbage or waste). b. To extract and reuse (useful substances found in waste).

4.  a. To use again, especially to reprocess: recycle aluminum cans; recycle old jokes. b. To recondition and adapt to a new use or function: recycling old warehouses as condominiums.

— re·cy¹cla·ble adjective & noun

— re·cy¹cler noun[1]