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  76/578264

 

This letter responds to the applicant’s communication dated 3/02/05, a response to the first Office action:

 

1. The requirement that the applicant submit information about the goods is continued.

 

2. The applicant must explain its statement that “The mark has become distinctive of the goods/services, as demonstrated by the attached evidence.”

 

See below for explanations of each of the above.

 

REQUIREMENT THAT APPLICANT SUBMIT ADDITIONAL INFORMATION CONTINUED

 

In the first Office action, the examining attorney required that the applicant submit additional information about its goods.  The applicant’s response is not entirely clear and must be clarified.  Furthermore, the applicant must submit additional information. Therefore, the requirement is continued.

 

In response to the original information requirement, the applicant stated that “Transmission mappers are the subject of provision U.S. Patent No. 60/562,632.”  Assuming that the information therein is not confidential, the applicant must submit a copy of this patent. 

 

Furthermore, in response to the question “Does the applicant’s software map the lens angular transmittance of optical projection systems?”, the applicant replied “Yes.  Transmission as a function of wafer side angle.”  The applicant must explain this answer which is unclear to the examining attorney.

 

In addition, the applicant has not responded to the following requirement included in the first Office action: 

 

The examining attorney requires information about the goods to determine whether all or part of the mark is merely descriptive as applied to the goods. TMEP Sections 814, 1209.  The applicant must provide product information for the goods.  This may take the form of a fact sheet, instruction manuals, or advertisement.  If this information is unavailable, the applicant should submit information for goods of the same type, explaining how its own product will differ.  If the goods feature new technology and no competing goods are available, the applicant must provide a detailed factual description of the goods.

 

In all cases, the submitted factual information must make clear how the goods operate, their salient features, and their prospective customer and/or channel of trade. This information is not readily available to the examining attorney and is pertinent to the descriptiveness determination.  Conclusory statements from the applicant or its attorney regarding the descriptiveness standard will not be sufficient to meet this requirement for information.

  

If the requested information is confidential and the applicant does not wish to have literature containing the information become part of a public record, the applicant should explain those circumstances.  Placing confidential information in a file is not required.  TMEP Section 814.

 

Please note, Trademark Rule 2.61(b) states “The examiner may require the applicant to furnish such information and exhibits as may be reasonably necessary to the proper examination of the application.”  Moreover, the examining attorney has an affirmative duty to seek out information necessary for proper examination.  Bart Schwartz International Textiles, Ltd. V. Federal Trade Commission, 289 F.2d 665, 129 USPQ 258 (C.C.P.A. 1960), aff’d 121 USPQ 99 (TTAB 1959).  The information considered to be necessary may include literature of exhibits as well as general information concerning circumstances surrounding the mark and, if applicable, its use.  Requests for information which is not public knowledge, but is peculiarly within the knowledge of the applicant or available to the applicant, are particularly appropriate.  TMEP Section 814.  The Trademark Trial and Appeal Board has upheld a refusal of registration based on the applicant’s failure to provide information requested under this rule.  In re Babies Beat Inc., 12 USPQ2d 1729 (TTAB 1990) (registration properly refused where applicant failed to comply with examining attorney’s request for copies of patent applications and other patent information). 

 

APPLICANT MUST EXPLAIN ITS CLAIM OF ACQUIRED DISTINCTIVENESS

 

In response to the first Office action, the applicant stated that “The mark has become distinctive of the goods/services, as demonstrated by the attached evidence.”  As an initial matter, the examining attorney notes that the evidence referred to was not attached.

 

In any case, the applicant must explain its claim of acquired distinctiveness.  As a general rule, a claim of acquired distinctiveness is submitted by an applicant in an attempt to overcome a refusal to register on the grounds that the mark is merely descriptive or ornamental as applied to the goods/services.  To date, the examining attorney has not issued such a refusal.   Therefore, the applicant must explain why it has offered a claim of acquired distinctiveness.

 

In any case, please note the following:

 

If applicant believes that its mark has acquired distinctiveness, that is, that it has become a distinctive source-indicator for the goods and/or services, then applicant may seek registration on the Principal Register under Trademark Act Section 2(f), 15 U.S.C. §1052(f).  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 as a source identifier, and any other evidence that establishes the distinctiveness of the mark as an indicator of source.  See In re Ideal Indus., Inc., 508 F.2d 1336, 184 USPQ 487 (C.C.P.A. 1975); In re Instant Transactions Corp., 201 USPQ 957 (TTAB 1979).  This Office will decide each case on its own merits.

 

To determine whether the proposed mark has acquired distinctiveness, the trademark examining attorney will consider the following factors: (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 or services identified in the application.  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.

 

The burden of proving that a mark has acquired distinctiveness is on applicant.  See Yamaha Int’l Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001 (Fed. Cir. 1988); In re Meyer & Wenthe, Inc., 267 F.2d 945, 122 USPQ 372 (C.C.P.A. 1959).  Applicant must establish that the purchasing public has come to view the proposed mark as an indicator of origin.  Allegations of sales and advertising expenditures cannot per se establish that a term has acquired significance as a mark.  It is necessary to examine the advertising material to determine how the term is used, the commercial impression created by such use, and the significance the term would have to prospective purchasers.  The ultimate test in determining acquisition of distinctiveness under Trademark Act Section 2(f) is not applicant’s efforts, but applicant’s success in educating the public to associate the claimed mark with a single source.  In re Packaging Specialists, Inc., 221 USPQ 917 (TTAB 1984); Congoleum Corp. v. Armstrong Cork Co., 218 USPQ 528 (TTAB 1983); Bliss & Laughlin Industries Inc. v. Brookstone Co., 209 USPQ 688 (TTAB 1981).

 

An intent-to-use applicant who has used the mark on related goods or services may file a claim of acquired distinctiveness under Trademark Act Section 2(f) before filing an amendment to allege use or a statement of use if applicant can establish that, as a result of applicant’s use of the mark on other goods or services, the mark has become distinctive of the goods or services in the intent-to-use application, and that this previously created distinctiveness will transfer to the goods and services in the intent-to-use application when use in commerce begins.  In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001); TMEP §1212.09(a).  The Trademark Trial and Appeal Board has set forth the requirements for showing that a mark in an intent-to-use application has acquired distinctiveness:

 

(1)    Applicant must establish that the same mark has acquired distinctiveness as to the other goods and/or services, by submitting evidence such as ownership of a prior registration for the same mark for related goods and/or services, a prima facie showing of acquired distinctiveness based on five years’ use of the same mark with related goods and/or services, or actual evidence of acquired distinctiveness for the same mark with respect to the other goods and/or services; and

 

(2)    Applicant must submit evidence to establish a sufficient relationship between the goods and/or services in connection with which the mark has acquired distinctiveness and the goods and/or services recited in the intent-to-use application to warrant the conclusion that the previously created distinctiveness will transfer to the goods and/or services in the application upon use.

 

In re Rogers, 53 USPQ2d 1741 (TTAB 1999).

 

NOTICE:  FEE CHANGE   

 

Effective January 31, 2005 and pursuant to the Consolidated Appropriations Act, 2005, Pub. L. 108-447, the following are the fees that will be charged for filing a trademark application:

 

(1) $325 per international class if filed electronically using the Trademark Electronic Application System (TEAS); or 

 

(2)   $375 per international class if filed on paper

 

These fees will be charged not only when a new application is filed, but also when payments are made to add classes to an existing application. If such payments are submitted with a TEAS response, the fee will be  $325 per class, and if such payments are made with a paper response, the fee will be $375 per class.

 

The new fee requirements will apply to any fees filed on or after January 31, 2005.

 

NOTICE:  TRADEMARK OPERATION RELOCATION

 

The Trademark Operation has relocated to Alexandria, Virginia.  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, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at http://www.gov.uspto.report/teas/index.html.

 

 

Nancy Clarke

/nancy clarke/

Trademark Examining Attorney

Law Office 102

Tel. (571) 272-9253

Fax (571) 273-9102

 

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action issued via email you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above and include the serial number, law office number and examining attorney’s name in your response.

 

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.