UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/580423
APPLICANT: CHEMCO CORP.
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514
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MARK: VOLUMEN
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CORRESPONDENT’S REFERENCE/DOCKET NO: CHEMCO 10.1-
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 76/580423
The assigned trademark examining attorney has reviewed the referenced application filed on March 10, 2004, and has determined the following.
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.
Registration is refused because the proposed mark merely describes a purpose of applicant’s goods and/or 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). A mark that describes an intended user of a product or service is also merely descriptive within the meaning of Section 2(e)(1). Hunter Publishing Co. v. Caulfield Publishing Ltd., 1 USPQ2d 1996 (TTAB 1986); In re Camel Mfg. Co., Inc., 222 USPQ 1031 (TTAB 1984); In re Gentex Corp., 151 USPQ 435 (TTAB 1966).
The foreign equivalent of a merely descriptive English word is not registrable under Section 2(e)(1) because it too is considered merely descriptive. In re Geo. A. Hormel & Co., 227 USPQ 813 (TTAB 1985); In re Optica International, 196 USPQ 775 (TTAB 1977); TMEP §1209.03(g).
The applicant seeks to register the mark “VOLUMEN,” which means VOLUME (see translation attached) for “hair care products, namely, hair shampoo, hair conditioner, styling gel, styling glaze, hair polisher, hair gel and hair glaze.” The definition of VOLUME is fullness. See dictionary definitions attached. The mark merely describes the purpose of the goods (i.e., to give the hair the appearance of fullness) and is, therefore, unregistrable on the Principal Register.
The record indicates that applicant has used its mark for a long time; therefore, applicant may seek registration on the Principal Register under Trademark Act Section 2(f), 15 U.S.C. §1052(f), based on acquired distinctiveness. To amend the application to Section 2(f) based on five years use, applicant should submit the following written statement claiming acquired distinctiveness, if accurate:
The mark has become distinctive of the goods and/or services through applicant’s substantially exclusive and continuous use in commerce for at least the five years immediately before the date of this statement.
Applicant must verify this statement with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20. 37 C.F.R. §2.41(b); TMEP §1212.05(d).
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.
Informalities
If applicant chooses to respond to the refusal(s) to register, then applicant must also respond to the following requirement(s).
Applicant must submit samples of advertisements or promotional materials and a photograph of the identified goods because the nature of the goods on which applicant intends to use its mark is not clear from the present record. If such materials are not available, then applicant must submit samples of advertisements or promotional materials and a photograph of similar goods. In addition, applicant must describe in some detail the nature, purpose and channels of trade of the goods listed in the application. 37 C.F.R. §2.61(b); TMEP §§814 and 1402.01(d).
B. Drawing
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).
C. Federal Registration Symbol
The specimen shows use of the federal trademark registration symbol ® with the mark; however, Office records do not show that the mark is registered. Applicant may not use the federal registration symbol until a mark is registered in this Office. After registration of the mark, applicant may then use the symbol but only with the specific goods or services listed in the registration. TMEP §§906 and 906.02.
The above information is advisory. Applicant need not respond to this issue.
D. Translation
Applicant must submit an English translation of the mark. 37 C.F.R. §2.61(b); TMEP §809. The following translation statement is suggested: “The English translation of VOLUMEN is VOLUME.”
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.
/Vivian Micznik First/
Trademark Examining Attorney
Law Office 114
(703) 308-9114 ext. 149
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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.