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  76/573599

 

This letter responds to the applicant’s communication filed on September 27, 2004.

 

The standard character claim has been accepted and entered into the record. 

 

However, the following issue remains outstanding and the requirement for compliance is hereby made FINAL.

 

Registration was refused under Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1), because the purpose and function of the goods for which registration is sought is merely descriptive.

 

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.

 

Section 2(e)(1) of the Trademark Act provides:

 

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on account of its nature unless it-

 

(e)      Consists of a mark which, (1) when applied to the goods of the applicant is merely descriptive or deceptively misdescriptive of them.

 

The case law, which interprets the foregoing, has been previously supplied.  However, for the sake of clarity, the same will be reiterated.

 

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.  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 section 1209.01(b).

 

Additionally, for determining whether a mark is merely descriptive, In re Abcor Development Corporation, 200 USPQ 215 (CCPA 1978) offers the following:

 

Whether or not a term is merely descriptive in the trademark sense must necessarily be considered in relation to the specific goods for which the registration is sought, the context in which it is used on labels, packages, or advertising materials directed to these goods, the possible significance of the term in relation to the goods, and the likely reaction thereto of the average purchaser as he encounters the goods in the market place.

 

Id. at 216.

 

Applying the foregoing to the instant case, the question is whether the mark, MODULAR, is merely descriptive of a “magnetic cylinder for holding printing, die cutting, and embossing plates on a rotating press.”  The attached evidence demonstrates that the modular printing presses and accessories therefor are described as modular.  In particular, being modular and/or easily interchangeable or expandable is touted as a desirable feature in printing presses.  The applicant’s magnetic cylinders are used in or with these modular printing presses.  Therefore, the mark is an apt description of the purpose, use and/or feature of the applicant’s goods.

 

Accordingly, the refusal to register the mark on the Principal Register is made final.

 

Appropriate Response – Final Action

Applicant may respond to this final action by either:  (1) submitting a timely response that fully satisfies any outstanding requirements, if feasible; (2) timely filing an appeal of this final action to the Trademark Trial and Appeal Board; or (3) timely filing a petition to the Director if permitted by 37 C.F.R. §2.63(b).  37 C.F.R. §2.64(a); TMEP §715.01.  Regarding petitions to the Director, See 37 C.F.R. §2.146 and TMEP Chapter 1700.  If applicant fails to respond within six months of the mailing date of this refusal, the application will be abandoned.  37 C.F.R. §2.65(a).

 

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.

 

 

Tricia McDermott Thompkins /TMT/

Trademark Attorney

Law Office 114

Phone No.: (571) 272-9463

Fax No.: (571) 273-9114

 

 

How to respond to this Office Action:

 

You may respond formally using the Office's Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://eteas.gov.uspto.report/V2.0/oa242/WIZARD.htm and follow the instructions therein, but you must wait until at least 72 hours after receipt if the office action issued via e-mail).  PLEASE NOTE: Responses to Office Actions on applications filed under the Madrid Protocol (Section 66(a)) CANNOT currently be filed via TEAS.

 

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.