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  76/569294

 

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

 

Search:

 

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

 

Disclaimer:

Applicant must insert a disclaimer of .COM in the application because the applicant may feature a web page.  Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.08(a)(i).

The following is the accepted standard format for a disclaimer:

 

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

 

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.

 

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.

 

Advisory:

 

The proposed mark appears to be comprised of an Internet address used to access applicant’s online computer information.  In view of this, applicant is advised that registration may be refused upon consideration of an amendment to allege use or statement of use.  Such a refusal would be based on a determination that the proposed mark, as used on the specimen, does not function as a service mark.  Trademark Act Sections 1, 3 and 45, 15 U.S.C. §§1051, 1053 and 1127; TMEP §1215.02(e).

 

Where a proposed mark only serves to indicate the applicant’s domain name or the Internet location where applicant’s website appears, and does not separately identify the applicant’s services, the mark fails to function as a service mark.  In re Eilberg, 49 USPQ2d 1955 (TTAB 1998); TMEP §1215.02(a).  A proposed mark comprising an Internet address is registrable only where the mark also functions as a source indicator for the identified services.

 

Questions:

 

If the applicant has any questions he/she  may contact the undersigned attorney.

 

NOTICE:  TRADEMARK OPERATION RELOCATING OCTOBER AND NOVEMBER  2004

 

The Trademark Operation is relocating to Alexandria, Virginia, in October and November 2004.  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, registration owners, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at www.uspto.gov.

 

My Law Office will move on November 1^St.  To reach me by phone after that date call (571) 272- 9316. 

 

To submit a fax response to this Office action after that date, send your response to the Law Office fax number, namely (571) 273-9106.

 

 

 

 

/Lourdes D. Ayala/

Examining Attorney

Law Office 106

703-308-9106 x 225

Fax: 703-746-8106

 

 

 

 

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.