UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/576145
APPLICANT: Global Marketing & Trading, LLC
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514
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MARK: ROLL UP
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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 76/576145
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.
However, the applicant should note the following ground of refusal:
MERE DESCRIPTIVENESS – SECTION 2(e)(1)
The examining attorney refuses registration on the Principal Register because the proposed mark merely describes the applicant’s goods. Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1); TMEP section 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 a 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 1209.03.
In this case, the proposed mark is “ROLL UP” for “cigarette papers and tobacco.” The mark is descriptive because it refers immediately to the nature and characteristics of the goods, which the identification shows are tobacco and cigarette papers for roll up cigarettes. The term “roll up” is commonly known as a type of cigarette. Please see the attached representative and excerpted articles from the Nexis database, which show the usage of this term. 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. Section 1052(e)(1). In re National Data Corp., 222 USPQ 515, 517 n.3 (TTAB 1984).
As the goods here consist of cigarette papers and tobacco for roll-up cigarettes, the mark merely identifies the nature and purpose of the goods. As a result, registration of the proposed mark must be refused. Although the trademark 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(s) to register, then applicant must also respond to the following requirement(s).
Applicant must submit the following standard character claim: “The mark is presented in standard characters without claim to any particular font style, size, or color.” 37 C.F.R. §2.52(a).
Please note that there is no required format or form for responding to this Office action. However, applicant should include the following information on all correspondence with the Office: (1) the name and law office number of the examining attorney; (2) the serial number of this application; (3) the mailing date of this Office action; and, (4) applicant's telephone number.
When responding to this Office action, applicant must make sure to respond in writing to each refusal and requirement raised. If there is a refusal to register the proposed mark, then applicant may wish to argue against the refusal, i.e., explain why it should be withdrawn and why the mark should register. If there are other requirements, then applicant should simply set forth in writing the required changes or statements and request that the Office enter them into the application record. Applicant must also sign and date its response.
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 19, 2004, please call (571) 272 -9285. Thank you.
/Susan Stiglitz/
Trademark Examining Attorney
Law Office 103
(703) 308-9103, ext. 233
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.
MAIL-IT REQUESTED: SEPTEMBER 8, 2004 10083K
CLIENT: SRS
LIBRARY: NEWS
FILE: ALLNWS
YOUR SEARCH REQUEST AT THE TIME THIS MAIL-IT WAS REQUESTED:
NOCAPS("ROLL UP") W/20 ("CIGARETTE PAPERS" OR TOBACCO)
NUMBER OF STORIES FOUND WITH YOUR REQUEST THROUGH:
LEVEL 1... 247
LEVEL 1 PRINTED
THE SELECTED STORY NUMBERS:
1-3,86
DISPLAY FORMAT: 30 VAR KWIC
SEND TO: STIGLITZ, SUSAN R.
TRADEMARK LAW LIBRARY
2101 CRYSTAL PLAZA ARC
MAILBOX 314
ARLINGTON VIRGINIA 22202-4600
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Copyright 2004 Haymarket Publishing Services Ltd
Marketing
July 28, 2004
SECTION: SECTOR INSIGHT, Pg. 32
LENGTH: 1506 words
HEADLINE: CIGARETTES - SMOKE SIGNALS
BYLINE: By Claire Murphy
BODY:
... 34%.
Imperial's Lambert & Butler and Richmond brands lead the cigarette market, the latter overtaking Benson & Hedges, despite Behr’s sponsorship of the Jordan Formula One team.
Imperial dominates the hand-rolling sector, following its purchase of the Van Nellie tobacco and Rile roll-up paper brands. It has also benefited from the fact that it now handles the UK distribution for Philip Morris' Marlboro brand, making it one of only two in the top 13 to have increased its volume sales over the past three years.
The ...
Copyright 2004 The Gloucester Citizen
The Gloucester Citizen
July 14, 2004
SECTION: News; People; Others; Pg. 4
LENGTH: 397 words
HEADLINE: Smoke and mirrors in the fag facts
BODY:
... systems in short order. So why doesn't that sort of thinking apply to smoking? The technology is there. Perhaps, instead of spending millions on dubious TV campaigns, the Government should spend the money, plus a minute percentage of the enormous revenue which it receives from tobacco duty, in giving grants to publicans to provide clean air systems.
And leave me and my mates to enjoy a pint and a roll-up in peace.
Copyright 2004 The Press Association Limited
Press Association
July 13, 2004, Tuesday
SECTION: HOME NEWS
LENGTH: 351 words
HEADLINE: BABYSITTER 'STUBBED CIGARETTE OUT ON TODDLER'
BYLINE: Sarah Cadet, PA News
BODY:
... marks around his neck and discovered 14 blisters on his torso the next morning.
Prosecuting, Robert Davies said the mother took the toddler to Bristol's children's hospital where he was examined by doctors.
Pediatricians found the marks could be consistent with burns caused by roll-up cigarettes.
In court, Davis admitted smoking roll-ups and said he had tobacco in the house on the night he looked after the toddler.
But he denied stubbing a cigarette out on the youngster, insisting the injuries did not happen while the child was in his care.
He said: "No I did not do it he did not have burn ...
Copyright 2000 News quest (North East) Limited
The Northern Echo
May 10, 2000
SECTION: Pg. 7
LENGTH: 240 words
HEADLINE: 800,000 CIGARETTES SEIZED BY TASK FORCE
BODY:
More than 200 raids were carried out on Teesside, in County Durham, Teesside, Sunderland and Northumberland.
More than 835,000 cigarettes were seized, along with more than 525,000 kilos of roll-up tobacco and 4,607 liters of wine, spirits and beer. Four vehicles were seized and one person was arrested in the Newcastle area.
Officers estimate that the tax lost to the Government amounts to about (GBP) 250,000.
Customs spokesman Rob Hastings-Threw said: "It is ...