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  76/570,448

 

The assigned Examining Attorney has reviewed the referenced application filed on January 16, 2004, and has determined the following.

 

 

Search Results

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.

 

 

Section 2(e)(1) Refusal:  Applicant’s Asserted Mark is Merely Descriptive

Registration is refused because Applicant’s proposed mark merely describes its goods.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §§1209 et seq.  Applicant’s asserted mark is SHACKLE POCKET applied to either “buoys” or “device used to prevent buoys from damaging boats” (the former is stated in the body of the application and the latter on the drawing page).

 

General Principles Regarding the “Merely Descriptive” Refusal

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 and/or 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).  A mark that describes an intended user of a product or service is also merely descriptive within the meaning of Section 2(e)(1).  Hunter Publishing Co. v. Caulfield Publishing Ltd., 1 USPQ2d 1996 (TTAB 1986); In re Camel Mfg. Co., Inc., 222 USPQ 1031 (TTAB 1984); In re Gentex Corp., 151 USPQ 435 (TTAB 1966).

 

The determination of whether a mark is merely descriptive is considered in relation to the identified goods and/or services, not in the abstract.  In re Polo International Inc., 51 USPQ2d 1061 (TTAB 1999) (Board found that DOC in DOC-CONTROL would be understood to refer to the “documents” managed by applicant’s software, not “doctor” as shown in dictionary definition); In re Digital Research Inc., 4 USPQ2d 1242 (TTAB 1987) (CONCURRENT PC-DOS found merely descriptive of “computer programs recorded on disk;” it is unnecessary that programs actually run “concurrently,” as long as relevant trade clearly uses the denomination “concurrent” as a descriptor of this particular type of operating system); In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985); In re American Greetings Corp., 226 USPQ 365, 366 (TTAB 1985) (“Whether consumers could guess what the product is from consideration of the mark alone is not the test”); TMEP §1209.01(b).

 

A term need not describe all of the purposes, functions, characteristics or features of the goods and/or services to be merely descriptive.  For the purpose of a Section 2(e)(1) analysis, it is sufficient that the term describe only one attribute of the goods and/or services to be found merely descriptive.  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).

 

Application of the General Principles to Applicant’s Asserted Mark

In this case, the Examining Attorney believes that Applicant’s proposed mark is merely descriptive of its goods for the following reasons.  Whether Applicant’s goods are “buoys” or “device used to prevent buoys from damaging boats,” the asserted mark SHACKLE POCKET is merely descriptive of a characteristic or feature of the goods, namely that they feature a shackle in a pocket.  One meaning of the word “shackle” is “[a]ny of several devices, such as a clevis, used to fasten or couple,”[1] and one meaning of the word “pocket” is “[a] receptacle, a cavity, or an opening.”[2] 

 

It is clear from Applicant’s specimen that Applicant’s buoys (or devices) feature a shackle in a pocket, and that, as Applicant’s specimen of use states, the purpose of the “shackle pocket” is to recess the shackle from the surface of the buoy, thereby “protect[ing] the shackel [sic] from damaging the boat.”  The Examining Attorney also attaches a screenshot from Inland Marine, which appears to be selling Applicant’s buoys.  In describing its buoys for sale, Inland Marine states that “[a]ll have a built in shackle pocket.”  See the attached screenshot from Inland Marine entitled “1.jpg.”  This is descriptive use and not use as a trademark.  In fact, Applicant itself does not use its asserted mark as a trademark, but rather to describe a feature of its buoys.  That is, Applicant’s specimen of use advertises that its buoys are “[n]ow with Shackle Pocket!” and that “Shackle Pocket available on 18”, 24” and 32” [buoys].”  This usage of the wording SHACKLE POCKET does not refer to the origin of the buoys (i.e., trademark usage), but rather to a feature of the goods.

 

Summation of the Merely-Descriptive Refusal

Accordingly, the Examining Attorney refuses registration under Section 2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), because Applicant’s proposed mark is merely descriptive of its goods.  Although the Examining Attorney has refused registration, Applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

 

If Applicant chooses to respond to the refusal to register, then Applicant must also respond to the following requirements.

 

 

Requirement for Acceptable Identification of Goods

The identification of goods needs clarification because it is too broad in that it could include goods classified in more than one international class.  TMEP §§ 1402.01 and 1402.03.  Applicant may adopt the following suggested identification of goods, in whole or in part, if it accurately describes Applicant’s goods:

 

Metal buoys, in International Class 6;

 

Life-buoys; marker buoys; navigational buoys; signalling buoys, in International Class 9;

 

Non-metal buoys, in International Class 20;

 

Fishing buoys, in International Class 28.

 

TMEP §§ 1402.01 and 1402.03.

 

Regarding the wording “device used to prevent buoys from damaging boats,” Applicant must state the common commercial name of the goods.

 

For assistance with identifying goods and/or services in trademark applications, please see the online searchable Trademark Acceptable Identification of Goods & Services Manual at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.

 

In the identification of goods, Applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases.  If Applicant chooses to use indefinite terms such as "accessories," "components," "devices," "equipment," "materials," "parts," "systems" and "products," then such terms must be followed by the word "namely" and a list of the specific goods identified by their common commercial or generic names.  TMEP §§1402.01 and 1402.03(a).

 

Please note that, while an application may be amended to clarify or limit the identification of goods, additions to the identification are not permitted.  37 C.F.R. §2.71(a); TMEP § 1402.06.  Therefore, Applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.

 

Addition of International Class(es)

If Applicant prosecutes this application as a multiple-class application, Applicant must comply with each of the requirements below for those goods based on actual use in commerce under Trademark Act Section 1(a):

 

(1)   Applicant must list the goods by international class with the classes listed in ascending numerical order.  TMEP §1403.01.

 

(2)   Applicant must submit a filing fee for each international class of goods not covered by the fee already paid.  37 C.F.R. §2.86(a)(2); TMEP §§810.01 and 1403.01.

 

(3)   Applicant must submit:

 

(a)    dates of first use of the mark anywhere and dates of first use of the mark in commerce; the dates of use, both anywhere and in commerce, must be at least as early as the filing date of the application; 37 C.F.R. §§2.34(a)(l)(i), 2.34(a)(1 )(ii) and 2.86(a)(3);

 

(b)   one specimen showing use of the mark for each class of goods; the specimen(s) must have been in use in commerce at least as early as the filing date of the application; 37 C.F.R. §§2.34(a)(1)(iv) and 2.86(a)(3); and

 

(c)    both the dates of use and a statement that "the specimen was in use in commerce at least as early as the filing date of the application" must be verified in a notarized affidavit or a signed declaration under 37 C.F.R. §2.20; 37 C.F.R. §§2.59(a) and 2.71(c).

 

The proper form for a declaration under 37 C.F.R. § 2.20 is as follows:

 

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 and the like may jeopardize the validity of the application or document or any resulting registration, declares 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)

 

 

Requirement for Substitute Specimen of Use or Change of Basis

The current specimen of record comprises an “advertisement” (Applicant’s words) and is unacceptable as evidence of actual trademark use because invoices, announcements, order forms, bills of lading, leaflets, brochures, publicity releases and other printed advertising material, while normally acceptable for showing use in connection with services, generally are not acceptable specimens for showing trademark use in connection with goods.  In re Bright of America, Inc., 205 USPQ 63 (TTAB 1979); See In re Ultraflight Inc., 221 USPQ 903 (TTAB 1984); TMEP §§904.05 and 904.07.

 

Examples of acceptable specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the goods or packaging, or displays associated with the goods at their point of sale.  TMEP §§904.04 et seq.

 

Furthermore, as noted above in the Section 2(e)(1) portion of this Office action, the specimen is also unacceptable because the wording SHACKLE POCKET on the specimen does not function as a trademark for Applicant’s buoys.  Rather, it refers to a feature of the buoys and not the buoys themselves.

 

Applicant must submit (1) a substitute specimen showing the mark as it is used in commerce on the goods or on packaging for the goods, and (2) 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. §§2.56 and 2.59(a); TMEP §904.09.  The proper form for a declaration under 37 C.F.R. §2.20 is provided above.

 

Substitution of Basis

If Applicant cannot comply with the requirement for a substitute specimen of use for the Section 1(a) basis asserted, Applicant may substitute a different basis for filing if Applicant can meet the requirements for the new basis. See TMEP §§806.03 et seq.  In this case, Applicant may wish to amend the application to assert a Section 1(b) basis, which is the intent-to-use basis.

 

Where an applicant amends its application to state an intent-to-use basis under Section 1(b), the applicant must submit the following statement:

 

Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application since the filing date of the application.

 

This statement must be verified with a notarized affidavit or a signed declaration under 37 C.F.R. §§2.20 and 2.33.  Trademark Act Section 1(b), 15 U.S.C. §1051(b); 37 C.F.R. §2.34(a)(2); TMEP §806.01(b).  The proper form for a declaration under 37 C.F.R. §2.20 is provided above.

 

 

Requirement for Standard Character Claim

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).

 

 

Applicant’s Ownership of Pending Application and Registrations Will Not Be Printed

Applicant’s claim of ownership of Application Serial No. 76/493,559 will not be printed on any registration that may issue from this application because only claims of ownership of pertinent live registrations are printed.  37 C.F.R. §2.36; TMEP §812.

 

Likewise, Applicant’s claim of ownership of U.S. Registration Nos. 1,721,958 and 2,629,328 will not be printed on any registration that may issue from this application because the marks are different.  Only prior registrations for the same or similar marks are considered related registrations for purposes of an ownership claim.  37 C.F.R. §2.36; TMEP §812.

 

 

Change in USPTO Trademark Contact Information

The USPTO Trademark Operations will be moving to the new Alexandria, Virginia campus in October and November 2004.  During that time, you are strongly encouraged to communicate with the USPTO through the Trademark Electronic Application System (TEAS), which can be found at www.uspto.gov <http://www.uspto.gov> .

 

Effective October 4, 2004, all Trademark-related paper mail must be sent to:

 

Commissioner for Trademarks

P.O. Box 1451

Alexandria, VA  22313-1451

 

My Law Office will move on October 28, 2004.  To reach me by phone after that date, call 571-272-9299.  To submit a fax response to this Office action after October 28, 2004, send your response to the Law Office fax number, namely 571-273-9105.

 

 

Conclusion

No set form is required for response to this Office Action.  The Applicant must respond to each point raised.  The Applicant should simply set forth the required changes or statements and request that the Office enter them.  The Applicant must sign the response.

 

Applicant should include the following information on all correspondence with the Office:  (1) the name and law office number of the trademark examining attorney; (2) the serial number of this application; (3) the mailing date of this Office action; and, (4) applicant's telephone number.  37 C.F.R. §2.194(b)(1); TMEP §302.03(a).

 

If the Applicant has any questions or needs assistance in responding to this Office Action, please telephone the assigned Examining Attorney.

 

/Michael E. Hall/

Michael E. Hall

Examining Attorney

Law Office 105

703-308-9105, ext. 137

703-872-9825 (fax)

 

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.