Offc Action Outgoing

MAILING/E-MAILING DATE INFORMATION: If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

Serial Number 76/570563

This letter responds to applicant’s communication filed on 3/27/06.

Applicant’s request for reconsideration of the final refusal and applicant’s notice of appeal both dated 9/23/05, are noted. The Trademark Trial and Appeal Board’s letter of 9/23/05 suspending the appeal and that jurisdiction has been restored to examining attorney is also noted. Applicant is now advised as follows:

ONLY THE FOLLOWING IS NOW AT ISSUE:

Section 2(e)(1) - Descriptive and Misdescriptive Refusals

Applicant’s response and identification amendment have been carefully considered, however, the refusal to register under Trademark Act Section 2(e)(1) because the proposed mark merely describes the goods is made FINAL. Applicant’s amended identification of goods can encompass professional grade jump start cables, power invertors, flashlights and spotlights. The Google search evidence previously of record, shows relevant merely descriptive use of “pro grade” describing products to consumers. The Trademark Trial and Appeal Board has held that materials obtained through computerized text searching are competent evidence to show the descriptive use of terms under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1). In re National Data Corp., 222 USPQ 515, 517 n.3 (TTAB 1984); TMEP §710.01(a).

See the copy of the Reg. No. 2993496, and others previously of record, showing the term PROGRADE registered on the Supplemental Register.

The alternative, refusal of registration under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1) because the proposed mark is deceptively misdescriptive of applicant’s goods is also made FINAL.

Although applicant claims that there is no intended professional application for applicant’s products, potential consumers viewing the use of the term PRO GRADE on the goods would reasonably believe that such goods are professional grade products. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §1209.04.

A mark is deceptively misdescriptive if it describes an ingredient, quality, characteristic, function or feature of the relevant goods and/or services, and the description conveyed by the mark is both false and plausible. In re Woodward & Lothrop Inc., 4 USPQ2d 1412 (TTAB 1987) (CAMEO held deceptively misdescriptive of jewelry); In re Ox‑Yoke Originals, Inc., 222 USPQ 352 (TTAB 1983) (G.I. held deceptively misdescriptive of gun cleaning patches, rods, brushes, solvents and oils); TMEP §1209.04.

Request for Information

To aid in the examination of this application, and not merely for description of the goods, applicant must submit any informative literature regarding the goods, for which applicant has asserted a bona fide intent to use the mark. 37 C.F.R. Section 2.61(b); TMEP section 814. If none are available applicant must so state for the record.

This requirement is made FINAL

Final Action

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)); and/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).

It is noted that applicant has filed an appeal to the Trademark Trial and Appeal Board,

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 matters. The petition fee is $100. 37 C.F.R. §2.6(a)(15).

Supplemental Register

Although an amendment to the Supplemental Register would normally be an appropriate response to refusals under Trademark Act Section 2(e)(1), such a response is not appropriate in the present case until an acceptable allegation of use is filed. The instant application was filed under Trademark Act Section 1(b), 15 U.S.C. §1051(b), and is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use under 37 C.F.R. §2.76 has been timely filed. 37 C.F.R. §2.47(d); TMEP §§815.02, 816.02 and 1102.03.

If applicant files an allegation of use and also amends to the Supplemental Register, please note that the effective filing date of the application will then be the date of filing of the allegation of use. 37 C.F.R. §2.75(b); TMEP §§206.01 and 816.02.

/Fred Mandir/

Examining Attorney

Law Office 105

(571) 272-9192

HOW TO RESPOND TO THIS OFFICE ACTION:

ONLINE RESPONSE: You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html. If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS. NOTE: Do not respond by e-mail. THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
REGULAR MAIL RESPONSE: To respond by regular mail, your response should be sent to the mailing return address above, and include the serial number, law office number, and examining attorney’s name. NOTE: The filing date of the response will be the date of receipt in the Office, not the postmarked date. To ensure your response is timely, use a certificate of mailing. 37 C.F.R. §2.197.

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.