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  76/566458

 

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

 

•           Search of Office records.

The examining attorney has searched the Office records and has found no similar registered or pending mark that would bar registration under Trademark Act §2(d), 15 U.S.C. §1052(d).  TMEP §704.02.

 

1.         Descriptiveness refusal.

The examining attorney refuses registration on the Principal Register because the proposed mark merely describes the goods/services.  Trademark Act §2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §§1209 et seq.

A mark is merely descriptive under Trademark Act §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).

In the instant case, the applicant seeks to register the mark PROFESSIONAL DOOR DEALER for a “trade magazine providing news … to [professionals] in the door dealer operations industry.”

The applicant’s magazine concerns professional door dealer issues, so the wording PROFESSIONAL DOOR DEALER is merely descriptive rather than source-indicating in nature.

Accordingly, registration is refused under Trademark Act §2(e)(1).  Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

 

•           Advisory—Supplemental Register.

Although the examining attorney has refused registration on the Principal Register, the applicant may amend the application to seek registration on the Supplemental Register.  Trademark Act §23, 15 U.S.C. §1091; 37 C.F.R. §§2.47 and 2.75(a); TMEP §§801.02(b), 815, and 816 et seq.

If the applicant responds to the above refusal to register, the applicant must also respond to the following refusal.

 

2.         Title-of-a-single-work refusal.

The examining attorney refuses registration on the Principal Register because the proposed mark is the title of a single creative work.  Trademark Act §§1, 2, and 45, 15 U.S.C. §§1051, 1052 and 1127.  As such, the proposed mark defines a distinct genus of goods and does not indicate the source of the goods.  In re Cooper, 254 F.2d 611, 117 USPQ 396 (C.C.P.A. 1958), cert. denied, 358 U.S. 840, 119 USPQ 501 (1958); In re Hal Leonard Publishing Corp., 15 USPQ2d 1574 (TTAB 1990); In re Scholastic Inc., 223 USPQ 431 (TTAB 1984).  TMEP §1202.08.  If the applicant uses the mark to identify a series, rather than a single work, then the applicant should provide evidence to demonstrate so for the record (a cover of any issue other than the premiere), and the examining attorney will withdraw this refusal. 

If the applicant responds to the above refusals to register, the applicant must also respond to the following.

 

3.         Drawing/specimen disagreement.

The drawing displays the mark as PROFESSIONAL DOOR DEALER; however, this differs from the display of the mark on the specimen, where it appears as PROFESSIONAL DOORDEALER. The applicant must either (a) submit a new drawing of the mark that agrees with the specimen or (b) submit a substitute specimen that shows use of the mark shown in the drawing.  37 C.F.R. §2.51; TMEP §§807.14 and 807.14(a)(i).

            a.         New drawing.

The applicant may not amend the drawing if the amendment would materially alter the character of the mark. 37 C.F.R. §2.72(a); TMEP §807.14(a).  The test for determining whether an amendment is a material alteration is as follows:

The modified mark must contain what is the essence of the original mark, and the new form must create the impression of being essentially the same mark. The general test of whether an alteration is material is whether the mark would have to be republished after the alteration in order to fairly present the mark for purposes of opposition. If one mark is sufficiently different from another mark as to require republication, it would be tantamount to a new mark appropriate for a new application.

In re Hacot-Colombier, 105 F.3d 616, 620, 41 USPQ2d 1523, 1526 (Fed. Cir. 1997), quoting Visa International Service Association v. Life-Code Systems, Inc., 220 USPQ 740,743-44 (TTAB 1983).

In the instant case, deleting a space would not constitute a material alteration.

Note:  New rules pertaining to drawings went into effect on November 2, 2003.  The new rules may be found at 37 C.F.R. §2.52(a), and information regarding these rules may be found in Exam Guide 01-03 §I.A.9.  All applications filed on or after November 2, 2003, must comply with the new drawing rules.  For applications filed before November 2, 2003, the new rules are optional.  Applicants opting to amend their drawing to comply with the new rules must advise the assigned examining attorney.

            b.         Substitute specimen.

If a substitute specimen is submitted, the applicant must also verify, with a declaration* under 37 C.F.R. §2.20 or affidavit, that the substitute specimen(s) was/were in use in commerce at least as early as the filing date of the application.  Jim Dandy Co. v. Siler City Mills, Inc., 209 USPQ 764 (TTAB 1981); 37 C.F.R. §2.59(a); TMEP §904.09.

If an amendment of the dates‑of‑use clause is necessary in order to state the correct dates of first use, the applicant must verify the amendment with a declaration* under 37 C.F.R. §2.20 or affidavit.  37 C.F.R. §2.71(c); TMEP §§903.05 and 1104.09(d).

Examples of acceptable specimens for goods are tags, labels, instruction manuals, containers, or photographs that show the mark on the goods or packaging.  TMEP §904.04 et seq.  Examples of acceptable specimens for services are signs, photographs, brochures, or advertisements that show the mark used in the sale or advertising of the services.  TMEP §§1301.04 et seq. 

 

4.         Standard-character claim.

The applicant must submit the following standard-character claim: “The mark is presented in standard character format without claim to any particular font style, size, or color.”  37 C.F.R. §2.52(a).

 

•           Responding to this Office Action.

To respond formally using the Office’s online Trademark Electronic Application System (TEAS), the applicant should use the “Form Wizard” at http://eteas.gov.uspto.report/V2.0/oa200/WIZARD.htm.

To respond formally via regular mail, the applicant should mail, to the Return Address listed above, correspondence bearing the serial number, law office, and examining attorney’s name on the upper right corner of each page. 

To check the status of an application at any time, the applicant is strongly encouraged to visit the Office’s online Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.  For general and other useful information about trademarks, the applicant may visit the Office’s official Web site at http://www.gov.uspto.report/main/trademarks.htm.  For inquiries or questions about this Office Action, the applicant should contact the assigned Examining Attorney.

/J. Brendan Regan/

Examining Attorney, Law Office 113

(703) 308-9113x420 • brendan.regan@uspto.gov