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  76/577762

 

The assigned examining attorney has reviewed the referenced application and 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.

 

Section 2(e)(1) - Descriptive Refusal

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

 

Applicant requests registration of the mark “COLLECTPAY” for use in connection with “electronic funds collection, disbursing, and posting service, performed by electronically debiting pre-authorized payments from a debtor's deposit account at a financial institution and electronically posting a correspondence credit.”

 

The mark is a combination of the terms “COLLECT” and “PAY.”  Dictionary entries for these terms have been attached.  A mark that combines descriptive terms may be registrable if the composite creates a unitary mark with a separate, nondescriptive meaning.  However, if each component retains its descriptive significance in relation to the goods or services, the combination results in a composite that is itself descriptive.  In re Tower Tech, Inc., 64 USPQ2d 1314 (TTAB 2002) (SMARTTOWER merely descriptive of “commercial and industrial cooling towers and accessories therefor, sold as a unit”); In re Sun Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001) (AGENTBEANS merely descriptive of computer software for use in development and deployment of application programs on global computer network); In re Putman Publishing Co., 39 USPQ2d 2021 (TTAB 1996) (FOOD & BEVERAGE ONLINE held to be merely descriptive of news and information service for the food processing industry); In re Copytele Inc., 31 USPQ2d 1540 (TTAB 1994) (SCREEN FAX PHONE merely descriptive of “facsimile terminals employing electrophoretic displays”); In re Entenmann’s Inc., 15 USPQ2d 1750 (TTAB 1990), aff’d per curiam, 928 F.2d 411 (Fed. Cir. 1991) (OATNUT held to be merely descriptive of bread containing oats and hazelnuts).

 

Here, the combination of terms in the mark, taken as a whole, immediately describes the use, function, or purpose of applicant’s services.  Prospective customers, upon encountering the mark, would immediately understand that the services are used to collect pre-authorized payments from a debtor’s account.  No imagination, thought, or perception would be required to discern what applicant’s product does.  Accordingly, the proposed mark merely describes a feature, characteristic, use, or purpose of the identified services, and its registration is properly refused under the Trademark Act Section 2(e)(1).

 

Supplemental Register

Although the trademark examining attorney has refused registration on the Principal Register, applicant may respond to the stated refusal 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.

 

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).

 

Recitation of Services

The wording used to describe the services needs clarification because it is unclear as to the nature of applicant’s services.  Applicant may adopt the following identification of services, if accurate: 

 

“[Specify, e.g., electronic funds transfer, electronic debit transaction, etc.] services, namely, electronic funds collection and disbursement performed by electronically debiting pre-authorized payments from and payment of credits to a debtor's deposit account at a financial institution,” in International Class 36. 

 

TMEP §1402.01.

 

Please note that, while the identification of services may be amended to clarify or limit the services, adding to the services or broadening the scope of the services is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the identification to include services that are not within the scope of the services set forth in the present identification.

 

Drawing - Standard Character Claim

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).

 

Specimen

The current specimen of record does not show use of the mark in connection with the services noted in the application.  Applicant has identified its services as “electronic funds collection, disbursing, and posting service, performed by electronically debiting pre-authorized payments from a debtor's deposit account at a financial institution and electronically posting a correspondence credit.”  However, the specimen, which often refers to the product as an “application” or “platform,” shows the mark used in connection with a software program that would be used by financial institutions to provide electronic payment services.

 

Applicant must submit a substitute specimen showing use of the mark for the goods and/or services specified in the application, because the specimen currently of record does not show use of the mark for any goods and/or services identified in the application.  37 C.F.R. §2.56; TMEP §904.  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.

 

Comments

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.

 

In all correspondence to the Patent and Trademark Office, the applicant should list the name and law office of the examining attorney, the serial number of this application, the mailing date of this Office action, and the applicant's telephone number.

 

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.

 

 

 

/J. Brett Golden/

Trademark Examining Attorney

U.S Patent & Trademark Office

Law Office 102

703-308-9102 ext. 178

 

To contact the examining attorney after October 11, 2004, please call 571-272-9257.  Thank you.

 

 

 

How to respond to this Office Action:

 

You may respond using the Office's Trademark Electronic Application System (TEAS) (visit http://www.gov.uspto.report/teas/index.html and follow the instructions therein), but you must wait until at least 72 hours after receipt of the e-mailed office action. PLEASE NOTE:  For those with applications filed pursuant to Section 66(a) of the Trademark Act, all responses to Office actions that include amendments to the identifications of goods and/or services must be filed on paper, using regular mail (or hand delivery) to submit such response. TEAS cannot be used under these circumstances. If the response does not include an amendment to the goods and/or services, then TEAS can be used to respond to the Office action.

 

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.

 

col·lect1

 
col·lect (ke-lèkt¹) verb

col·lect·ed, col·lect·ing, col·lects verb, transitive

1.    To bring together in a group or mass; gather.

2.    To accumulate as a hobby or for study.

3.    To call for and obtain payment of: collect taxes.

4.    To recover control of: collect one's emotions.

5.    To call for (someone); pick up: collected the children and drove home.

 

verb, intransitive

1.    To come together in a group or mass; gather. See synonyms at gather.

2.    To take in payments or donations: collecting for charity.

 

adverb & adjective

Abbr. col., coll.

With payment to be made by the receiver: called collect; a collect phone call.

 [Middle English collecten, from Latin colligere, collêct- : com-, com- + legere, to gather.][1]

pay1

 
pay (pâ) verb

paid (pâd) pay·ing, pays verb, transitive

1.    To give money to in return for goods or services rendered: pay the cashier.

2.    To give (money) in exchange for goods or services: paid three dollars for a hamburger; paid an hourly wage.

3.    To discharge or settle (a debt or an obligation): paying taxes; paid the bill.

4.    a. To give recompense for; requite: a kindness that cannot be paid back. b. To give recompense to; reward or punish: I'll pay him back for his insults.

5.    To bear (a cost or penalty, for example) in recompense: She paid the price for her unpopular opinions.

6.    To yield as a return: a savings plan that paid 12 percent interest.

7.    To afford an advantage to; profit: It paid us to be generous.

8.    To give or bestow: paying compliments; paying attention.

9.    To make (a visit or call).

10.  Past tense and past participle paid or  payed (pâd). To let out (a line or cable) by slackening.

 

verb, intransitive

1.    To give money in exchange for goods or services.

2.    To discharge a debt or an obligation.

3.    To bear a cost or penalty in recompense: You'll pay for this mischief!

4.    To be profitable or worthwhile: It doesn't pay to get angry.

 

adjective

1.    Of, relating to, giving, or receiving payments.

2.    Requiring payment to use or operate: a pay telephone.

3.    Yielding valuable metal in mining: a pay streak.

 

noun

1.    The act of paying or state of being paid.

2.    Money given in return for work done; salary; wages.

3.    a. Recompense or reward: Your thanks are pay enough. b. Retribution or punishment.

4.    Paid employment: the workers in our pay.

5.    A person considered with regard to his or her credit or reliability in discharging debts.

 

— phrasal verb.

pay off

1.    To pay the full amount on (a debt).

2.    To effect profit: a bet that paid off poorly.

3.    To get revenge for or on; requite.

4.    To pay the wages due to (an employee) upon discharge.

5.    Informal. To bribe.

6.    Nautical. To turn or cause to turn (a vessel) to leeward.

pay out

1.    To give (money) out; spend.

2.    To let out (a line or rope) by slackening.

pay up

To give over the full monetary amount demanded.

 

— idiom.

pay (one's) dues

To earn a given right or position through hard work, long-term experience, or suffering: She paid her dues in small-town theaters before getting a part in a Broadway play.

pay (one's) way

To contribute one's own share; pay for oneself.

pay the piper

To bear the consequences of something.

pay through the nose Informal.

To pay excessively.

 [Middle English paien, from Old French paiier, from Late Latin, to appease, from Latin pâcâre, to pacify, from pâx, pâc-, peace.]

 Word History: Given the unpeaceful feelings one often has in paying bills or income taxes, it is difficult to believe that the word pay ultimately derives from the Latin word pâx, “peace.” However, it is not the peace of the one who pays that is involved in this development of meaning. From pâx, meaning “peace” and also “a settlement of hostilities,” was derived the word pâcâre, “to impose a settlement on peoples or territories.” In Late Latin pâcâre was extended in sense to mean “to appease.” The Old French word paiier that developed from Latin pâcâre came to have the specific application “to pacify or satisfy a creditor,” a sense that came into Middle English along with the word paien (first recorded around the beginning of the 13th century), the ancestor of our word pay.[2]