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  76/577497

 

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

 

Search Results

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.

 

Sections 1,2 and 45 – Column, Feature, or Section of a Publication

Registration is refused because the proposed mark identifies only a portion of applicant’s publication.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051, 1052 and 1127; TMEP §§1202.07 et seq.  Periodically issued portions of an applicant’s publication, such as columns or features not promoted as separate articles of commerce, are integral elements of the complete publication and are not considered separate goods in trade.

 

Terms adopted to distinguish one section of the publication from other sections of the same publication that emanate from the same party do not perform a trademark function.  In re Broadcasting Publications, Inc., 135 USPQ 374 (TTAB 1962).  Purchasers rely on the mark identifying the complete publication as a source indicator and are normally unfamiliar with feature or section titles in making a selection.

 

Applicant may respond to this refusal by doing one of the following, as appropriate:

 

(1)  Applicant may submit evidence that the section/feature is in fact separate goods in trade.  Syndicated features/columns are considered separate goods in trade.  See In re Broadcasting Publications, Inc., 135 USPQ 374 (TTAB 1962); TMEP §1202.07(a)(i).  If applicant’s sections or portions are featured in publications other than those of applicant (whether syndicated or not), or is removable from the publication and is promoted apart from the complete publication, then it may also be considered separate goods in trade.

 

(2)  Applicant may submit evidence of acquired distinctiveness under Section 2(f) of the Trademark Act, 15 U.S.C. §1052(f).  Applicant must present sufficient evidence establishing that the section or portion is recognized by readers or others in the publishing trade apart from the applicant’s complete publication or other section titles in the publication.  TMEP §1202.07(a)(ii).

 

(3)  Applicant may amend to the Supplemental Register.  Ex parte Meredith Publishing Co., 109 USPQ 427 (Comm’r Pats. 1956).

 

Supplemental Register

Although the trademark examining attorney has refused registration on the Principal Register, applicant may respond to the stated refusal(s) by amending the application to seek registration on 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.

 

Disclaimers

Applicant must disclaim the descriptive wording “Good Food” apart from the mark as shown because it merely describes the subject matter of applicant’s goods.  Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a).

 

The computerized printing format for the Office’s Trademark Official Gazette requires a standardized format for a disclaimer.  TMEP §1213.08(a)(i).  The following is the standard format used by the Office:

 

No claim is made to the exclusive right to use “GOOD FOOD” apart from the mark as shown.

 

See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).

 

Specimen

Applicant must submit one complete specimen or facsimile showing the mark as it is used in commerce so that the registrability of the mark can be assessed.  The current specimen of record is unacceptable because it is a cutout from more comprehensive matter; i.e., the specimen comprises a page from a magazine and is unacceptable because it is not the whole magazine.  37 C.F.R. §2.56.

 

If applicant submits the complete version of the same specimen originally filed, then no additional verification need be submitted.  However, if the complete specimen or facsimile is of a different type than that originally submitted, then the new specimen constitutes a “substitute” specimen.  In that case, applicant must also submit a statement that “the substitute specimen was in use in commerce at least as early as the filing date of the application,” verified with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.59(a); TMEP §904.09.

 

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.

 

 

 

Jeffrey S. Molinoff

/Jeff Molinoff/

Law Office 103

jeffrey.molinoff@uspto.gov

703-308-9103 ext. 247

703-746-8103 fax

 

 

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.