UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/562328
APPLICANT: Volkswagen of America, Inc.
|
*76562328* |
CORRESPONDENT ADDRESS: BARTH X. DEROSA STEVENS DAVIS MILLER MOSHER LLP 1615 L STREET, NW, SUITE 850 WASHINGTON, DC 20036
|
RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514
|
MARK: EXCELLERATED LEADERSHIP DEVELOPMENT
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS:
|
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
|
Serial Number 76/562328
The assigned examining attorney has reviewed the referenced application and determined the following.
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. §1052(d). TMEP §704.02. However, the applicant must address the following issues.
Applicant must insert a disclaimer of “leadership development” in the application because the term is merely descriptive of the applicant’s services of conducting classes, seminars, conferences and workshops in executive leadership. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.08(a)(i). Please see attached Internet search results that demonstrate the descriptive nature of the term when used in conjunction with the applicant’s services.
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 is the accepted standard format for a disclaimer:
No claim is made to the exclusive right to use “LEADERSHIP DEVELOPMENT” apart from the mark as shown.
Standard Character Format
The Trademark Rules pertaining to drawings were amended on November 2, 2003. For applications filed prior to November 2, 2003, applicants may follow either the new standard character drawing rules or the typed drawing rules in force prior to their amendment on November 2, 2003. Exam Guide 01-03, section I.A.9.
The applicant’s filing date is December 1, 2003. Therefore, the applicant must submit the following standard character claim: “The mark is presented in standard characters without claim to any particular font style, size, or color.” 37 C.F.R. §2.52(a).
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
/Ty Murray/
Trademark Examining Attorney
United States Patent & Trademark Office
Law Office 113
(703) 308-9113 x 123
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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.