UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/566126
APPLICANT: State Animal Response Team
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: CART
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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.
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Serial Number 76/566126
This letter responds to the applicant's communications filed on January 18 and 31, 2005. The applicant’s amendment to include a standard character claim is acceptable and made of record. For the reasons stated below the refusal under 2(e)(1) and the requirement for an acceptable specimen of use that matches the drawing are maintained and made final.
FINAL REFUSAL – SECTION 2(e)(1)
Registration was refused under Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1), because the subject matter for which registration is sought is merely descriptive of the identified services.
The examining attorney has considered the applicant's arguments carefully but has found them unpersuasive. For the reasons below, the refusal under Section 2(e)(1) is maintained and made FINAL.
The applicant applied to register the term CART for “emergency services, namely, an interagency coordinated organization for responding to animal emergencies.”
The applicant’s mark was refused registration based on Section 2(e)(1) of the Trademark Act. Thus whether the applicant’s mark is generic is not the issue. The issue is whether the proposed mark is merely descriptive of the applicant’s services. 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 goods/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).
DISCUSSION
In its response, the applicant argues that “The mark CART does not forthwith convey an immediate idea of the nature, qualities or characteristics of Applicant's animal emergency services. The Trademark Office cites three instances where the name CART has been used on a website. This is certainly not evidence of substantial use of CART in a descriptive sense. Indeed, of the three uses referred to, two of the uses are uses by entities affiliated with the Applicant. Importantly, three isolated uses found on a website should never raise to the level of establishing the descriptiveness.” Response at 4-5.
In addition to the evidence of record the Examining Attorney notes the additional attachments from a search of the Internet. The attachments labeled cart-1, cart-1-2, cart-1-2 and cart-1-4 consist of printouts from a search of Google® in which there were 102 articles found that contained CART and “county animal response team.” For example:
This one-day County Animal Response Team (CART) training session will be held at the Lamar Community Center, 606 South 6th Street, Lamar, CO (registration opens 8:00 am and the session starts at 8:30 am.) The region includes Baca, Bent, Crowley, Kiowa, Otero, and Prowers Counties. See attachments labeled cart6-1 and cart6-2.
Weld CART
The Weld County Animal Response Team is a group of government agencies, non-profit organizations, and private businesses that is dedicated to dealing with animal issues in disaster situations. Our
goal is to facilitate dealing with animals in these instances in order to minimize the risks to both the animals and their owners. See attachments labeled cart5-1 and
cart 5-2.
NC Emergency Management has asked each county to put together a County Animal Response Team (CART) and an Animal Disaster Plan for each county in the state. Serving as Extension's Coordinator for the Hay and Feed Lift for Livestock Producers in recovery efforts from Floyd, I saw first hand how badly a plan was (is) needed. I have since been put very close to this issue on the State level serving on the State Animal Response Team in trying to develop the State Plan, serving on the Extension Disaster Team and by attending the National Animal Disaster Conference in Orlando. See attachment labeled cart2.
A county animal-response team (CART) is responsible for implementing the animal response plan. This team consists of citizen volunteers and veterinarians committed to helping animals in case of disaster by working at temporary pet shelters. See attachment labeled cart4.
Guilford County Animal Response Team Plan
and associated documents
Note: In Spring, 2004. Guilford County Health Department took over the CART. See attachment labeled cart3
The examining attorney must consider whether a mark is merely descriptive in relation to the identified goods/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 (C.C.P.A. 1978); In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985); In re American Greetings Corp., 226 USPQ 365 (TTAB 1985). TMEP §1209.01(b). Thus the issue is not whether the consumer in the abstract would immediately think of services when confronted with the proposed mark, but whether a consumer encountering the proposed mark in relation to the services would require any imagination, thought or perception to determine the nature of the services from the term.
As the evidence of record shows, CART is used as the common acronym for “county animal response team.” The acronym is used by people in the applicant’s industry to describe an organization that provides emergency care to animals. A consumer encountering the proposed mark in connection with the applicant’s services would perceive the term as merely a descriptive acronym for county animal response team and not as a source indicator.
The evidence of record shows that CART is used to identify an organization that responds to animal emergencies. The fact that an applicant may be the first user of a merely descriptive or generic designation does not justify registration where the evidence shows that the term is merely descriptive of the identified goods and/or services. In re Acuson, 225 USPQ 790 (TTAB 1985) (COMPUTED SONOGRAPHY descriptive of ultrasonic imaging instruments); In re National Shooting Sports Foundation, Inc., 219 USPQ 1018 (TTAB 1983) (SHOOTING, HUNTING, OUTDOOR TRADE SHOW AND CONFERENCE held apt descriptive name for conducting and arranging trade shows in the hunting, shooting and outdoor sports products field); TMEP §1209.03(c). As the evidence of record shows CART is commonly used to identify county animal response teams. Accordingly, based on the reasons stated above, the applicant’s mark is merely descriptive of the services, and the refusal of registration under Section 2(e)(1) of the Trademark Act is made FINAL.
SPECIMEN V. DRAWING
The applicant was required to submit a specimen of use, which matches the drawing. In its response the applicant submitted a specimen showing use of the mark C.A.R.T. The mark as depicted on the drawing does not agree with the mark as it appears on the specimens. Specifically, the drawing displays the mark as CART, and the specimen depicts the mark as C.A.R.T. Accordingly, the requirement for the applicant to submit a specimen of use that matches the drawing is maintained and made FINAL.
Applicant must either:
(1) submit a new drawing of the mark that agrees with the mark as it appears on the specimen and that is not a material alteration of the original mark; 37 C.F.R. §2.72(a); TMEP §807.14(a);
(2) submit a substitute specimen that shows use of the mark as it presently appears on the drawing and is accompanied by a statement that “the substitute specimen was in use in commerce at least as early as the filing date of the application,” verified with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20; 37 C.F.R. §§2.59(a) and 2.72(a); TMEP §904.09; or
(3) amend the application basis to intent-to-use under Section 1(b), and satisfy all the requirements for this new basis.
37 C.F.R. §2.51; TMEP §§807.14 and 807.14(a)(i).
For your convenience, the examining attorney includes the following example of the statement supporting use of the substitute specimen supported by an acceptable declaration under 37 C.F.R. Section 2.20.
The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. 1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares the substitute specimen was in use in commerce at least as early as the filing date of the application; that the facts set forth in this application are true; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.
_____________________________
(Signature)
_____________________________
(Print or Type Name and Position)
_____________________________
(Date)
RESPONSE TO FINAL
If applicant fails to respond to this final action within six months of the mailing date, the application will be abandoned. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a). Applicant may respond to this final action by:
(1) submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); or
(2) filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).
In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2). 37 C.F.R. §2.64(a). See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matter. The petition fee is $100. 37 C.F.R. §2.6(a)(15).
Effective January 31, 2005 and pursuant to the Consolidated Appropriations Act, 2005, Pub. L. 108-447, the following are the fees that will be charged for filing a trademark application:
(1) $325 per international class if filed electronically using the Trademark Electronic Application System (TEAS); or
(2) $375 per international class if filed on paper
These fees will be charged not only when a new application is filed, but also when payments are made to add classes to an existing application. If such payments are submitted with a TEAS response, the fee will be $325 per class, and if such payments are made with a paper response, the fee will be $375 per class.
The new fee requirements will apply to any fees filed on or after January 31, 2005.
NOTICE: TRADEMARK OPERATION RELOCATION
The Trademark Operation has relocated to Alexandria, Virginia. Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:
Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451
Applicants, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at http://www.gov.uspto.report/teas/index.html.
/Jennifer Martin/
Examining Attorney, L.O. 116
(571) 272-9193; (571) 273-9116 (fax)
Jennifer.Martin@uspto.gov
HOW TO RESPOND TO THIS OFFICE ACTION:
STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.
VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.
GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.