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  76/575252

 

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

 

NO CONFLICTING MARK NOTED

 

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

 

MARK IS MERELY DESCRIPTIVE

 

The examining attorney refuses registration on the Principal Register because the proposed mark merely describes the goods.  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.  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).

 

The applicant applied to register the mark STAY AWAKE for “pharmaceutical preparations, namely, stay alert products.”

 

The proposed mark STAY AWAKE simply describes the applicant’s goods.  The term “STAY” is defined as “to continue to be in a place or condition.”  The American Heritage Dictionary of the English Language, 4th Ed. (2000).  See attachments.  The term “AWAKE” is defined as “completely conscious; not in a state of sleep.”  Id.  See attachments. 

 

The proposed mark STAY AWAKE merely describes the purpose of the applicant’s goods – that is, to maintain the user in a state of consciousness – and does nothing else.  Accordingly, the mark is not registerable on the Principal Register.

 

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.  If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informality.

 

DRAWING

 

The drawing shows the mark with a line drawn under the wording.  The applicant must submit a new drawing of the mark showing the mark without the underscore; and submit a statement that “the mark is presented in standard character format without claim to any particular font, style, size, or color.”  37 C.F.R. §2.52(1)(1).

 

The requirements for a standard character drawing submitted on paper are as follows:

 

·        a sheet of nonshiny white paper that is separate from the application and is 8 to 8.5 inches wide by 11 to 11.69 inches long (or 20.3 to 21.6 cm. wide and 27.9 to 29.7cm. long);

 

·         one of the shorter sides of the sheet should be regarded as its top edge;

 

·        include the caption “DRAWING PAGE” at the top of the drawing beginning one inch (2.5 cm.) from the top edge;

 

·        depict the mark in black print;

 

·        depict all letters and words in the mark in Latin characters;

 

·        depict all numerals in the mark in Roman or Arabic numerals; and

 

·        the mark includes only common punctuation or diacritical marks as shown on the Office’s official table of acceptable standard characters.

 

37 C.F.R. §§2.52(a) and 2.54; See TMEP §§807.01(a), 807.01(b), 807.01(c) and 807.06.

 

The requirements for a standard character drawing submitted through TEAS are as follows:

 

·        depict the mark in black print;

 

·        depict all letters and words in the mark in Latin characters;

 

·        depict all numerals in the mark in Roman or Arabic numerals; and

 

·        the mark includes only common punctuation or diacritical marks as shown on the Office’s official table of acceptable standard characters.

 

37 C.F.R. §§2.52(a).

 

The standard character drawing may be entered into the appropriate text field on the TEAS form or attached as a digitized image.  If the applicant attaches a digitized image, then the image must be in .jpg format, formatted at no less than 300 and no more than 350 dots per inch; and no smaller in any direction than 250 pixels and no larger in any direction than 944 pixels.  37 C.F.R. §2.53(c).

 

RESPONSE TO THIS LETTER

 

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.  In addition to the identifying information required at the beginning of this letter, the applicant should provide a telephone number to speed up further processing.

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining 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.

 

To reach the undersigned attorney by telephone after October 12, 2004, please call (571) 272-9264. 

 

/MVS/

Maria-Victoria Suarez

Trademark Attorney

Law Office 102

(703) 308-9102, x196

maria-victoria.suarez@uspto.gov

 

 

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.