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  76/559198

 

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 §704.02.

 

Merely Descriptive

The examining attorney refuses registration on the Principal Register because the proposed mark merely describes the services.  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 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).  It is not necessary that a term describe all of the purposes, functions, characteristics or features of the services to be merely descriptive.  It is enough if the term describes one attribute of the services.  In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973).  TMEP §1209.01(b). 

 

Here the applicant provides a website for the sale of medical related goods.  Such goods may include hospital uniforms and clothing referred to as “scrubs.”  Thus, “scrubs” in the mark merely describes the goods sold through the service.   See attached evidence of disclaimer of “scrubs.”  If scrubs are not sold through the service the applicant may state the same in the description of services.

 

Although registration has been refused, the applicant may respond to the refusal by submitting evidence and arguments in support of registration.  If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informality.

 

Recitation of Services

The recitation of services is unacceptable as indefinite.  The applicant may amend this wording as follows:

 

“Providing a Web site that communicates member information and offers services to its members namely,” is unacceptable.  The nature of the “member information” is not clear.  Moreover, website are merely methods of delivery of services.  The actual service should be listed.

 

“Allowing members to purchase goods, equipment and services from various vendors,” is too vague.  If the applicant is providing a retail store the applicant may state “providing online retail store services in the field of (define field of goods sold).”  These services may also be “Promoting the goods and services of others by providing hypertext links to the web sites of others.” 

 

“Monitor their contracts with vendors,” is too vague.  The nature of the monitoring, contracts and vendors must be described.  

 

“Register for special events” does not appear to be a service.  If the applicant is organizing  “special events” the nature of the events must be described. 

 

“And access customer service” should be defined as “providing customer service in the field of (define field of customer service.”

 

For the applicant's convenience, the Trademark Acceptable Identification of Goods and Services Manual on the internet at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/ offers a searchable list of acceptable identifications and classifications.  When formulating and classifying identifications the Manual is a useful resource and guide, but it is not an exhaustive list of every acceptable identification. 

 

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

 

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

 

 

 

 

 

/Daniel F. Capshaw/

Examining Attorney

Law Office 110

703.308.9110 ext. 241

 

 

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.