UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/574209
APPLICANT: Paisano Publications, LLC
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514
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MARK: BIKER
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS: |
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 76/574209
The assigned examining attorney has reviewed the referenced application and determined the following.
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—Merely Descriptive
Registration is refused because the proposed mark is merely descriptive of applicant’s goods and/or services. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §§1209 et seq.
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 applicant applied to register the mark, BIKER, for “Electronic publications, including text and images, directed to readers and viewers interested in motorcycles, motorcycle customization, the American motorcycle lifestyle and related subjects, recorded on computer media and electronically distributed”. The proposed mark is merely descriptive because it immediately tells purchasers that the goods are about bikers.
bik·er
bik·er (bì¹ker) noun
1. One who rides a bicycle or a motorbike.
2. A motorcyclist, especially a member of a motorcycle gang.[1]
Accordingly, the mark is refused registration on the Principle Register under section 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.
Additional evidence is needed to support the claim of distinctiveness. Applicant’s allegation of five years’ use alone is insufficient evidence of distinctiveness in this case because applicant’s mark is highly descriptive of the goods. TMEP §1212.05(a). In re Kalmbach Publishing Co., 14 USPQ2d 1490 (TTAB 1989).
Applicant must establish acquired distinctiveness by a preponderance of the evidence. Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001 (Fed. Cir. 1988). This evidence may include specific dollar sales under the mark, advertising figures, samples of advertising, consumer or dealer statements of recognition of the mark, and any other evidence that establishes the distinctiveness of the mark as an indicator of source. The Office will decide each case on its own merits.
If additional evidence is submitted, the following factors will be considered when assessing its sufficiency: (1) how long applicant has used the mark; (2) the type and amount of advertising of the mark; and (3) applicant’s efforts to associate the mark with the goods and/or services. See Ralston Purina Co. v. Thomas J. Lipton, Inc., 341 F. Supp. 129, 173 USPQ 820 (S.D.N.Y. 1972); In re Packaging Specialists, Inc., 221 USPQ 917 (TTAB 1984); 37 C.F.R. §2.41; TMEP §§1212, 1212.01 and 1212.06 et seq.
Or, applicant may seek Principal Register registration under Trademark Act Section 2(f), 15 U.S.C. §1052(f), by claiming acquired distinctiveness through ownership of U.S. Registration 1044847. To do so, applicant must submit the following statement, if accurate:
The mark has become distinctive of the goods as evidenced by ownership of U.S. Registration 1044847 on the Principal Register for the same mark for related goods. 37 C.F.R. §2.41(b); TMEP §§1212.04 et seq.
Alternatively, the applicant may amend to the Supplemental Register. Trademark Act Section 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 chooses to respond to the refusal to register, the applicant must also respond to the following informality in order for the application to proceed. Please note, compliance with the below mentioned informality is insufficient, in and of itself, to overcome the above mentioned deficiencies.
Amendment of Identification
The wording in the identification of goods needs clarification because it is indefinite. Applicant must amend the identification of goods to specify the common commercial or generic name for the goods. If there is no common commercial or generic name for the product, then applicant must describe the product and intended consumer as well as its main purpose and intended uses. TMEP §1402.01.
Please delete the wording “electronically” at the end of the identification because it is superfluous wording that it is not needed.
The applicant may adopt the following identification and classification, if accurate:
Electronic publications, [indicate type, e.g., magazine] directed to readers and viewers interested in motorcycles, motorcycle customization, the American motorcycle lifestyle and related subjects, recorded on computer media in International Class 09.
TMEP §1402.01.
Additional Information
Applicant must submit samples of advertisements or promotional materials and a photograph of the identified goods because the nature of the goods on which applicant uses or intends to use its mark is not clear from the present record. If such materials are not available, then applicant must submit samples of advertisements or promotional materials and a photograph of similar goods. In addition, applicant must describe in some detail the nature, purpose and channels of trade of the goods listed in the application. 37 C.F.R. §2.61(b); TMEP §§814 and 1402.01(d).
Additions to Identification Not Permitted and Identification Manual
Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.
For assistance with identifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.
If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the requirements below for those goods and/or services based on actual use in commerce under Trademark Act Section 1(a):
(1) Applicant must list the goods/services 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 and/or services 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 and/or services; 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).
It is noted that the mark is in stylized form and reflected as such in the records.
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.
To reach the undersigned attorney by telephone after October 20, 2004, please call (571) 272 - 9464. Thank you.
/William T. Verhosek/
Examining Attorney
Law Office 114
703-308-9114x142
(fax) 703-746-8114
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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.
[1]The American Heritage® Dictionary of the English Language, Third Edition copyright © 1992 by Houghton Mifflin Company. Electronic version licensed from INSO Corporation; further reproduction and distribution restricted in accordance with the Copyright Law of the United States. All rights reserved.