UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/581750
APPLICANT: Wood, Michael Tate
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: BIG MOUTH DECOY BAGS
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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 76/581750
This letter responds to the applicant’s communication filed on April 11, 2005.
The standard character drawing claim has been entered.
The substitute specimen is acceptable.
Upon subsequent review of the above referenced application the examining attorney has determined that the proposed mark is descriptive. As such, the disclaimer requirement is withdrawn.
Mark is Merely Descriptive:
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/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).
The applicant applied to register the mark BIG MOUTH DECOY BAGS for ducking hunting decoy bags.
The applicant’s mark is merely descriptive because it immediately conveys to prospective consumers a feature of the applicant’s goods, namely, decoy bags that have a big mouth or wide mouth. In addition, the specimens provided show that the decoy bags have a big or a wide mouth, which makes the bags easier to fill or empty.
The determination of whether or not a mark is merely descriptive must be made not in the abstract but, rather, in relation to the goods or services for which registration is sought; the context in which the mark is used, or intended to be used, in connection with those goods or services; and the possible significance which the mark would have, because of that context, to the average purchaser of the goods or services in the market place. See In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (C.C.P.A. 1978); In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985).
It is not necessary that a term describe all of the purposes, functions, characteristics or features of a product in order to be considered merely descriptive; it is enough if the term describes one significant function, attribute or property. In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973).
The term BIG refers to being of considerable size.[1] The term MOUTH refers to the opening through which a container is filled or emptied.[2]
The examining attorney refers to the excerpted articles from the examining attorney's search in the LEXIS/NEXIS Research Database and the World Wide Web that evidence the descriptiveness of the mark in relation to the goods. See attachments.
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 such, the proposed mark is merely descriptive of a feature of the applicant’s goods. Therefore, the proposed mark is refused registration.
RESPONSE:
Although the examining attorney had refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration. If the applicant chooses to respond to the refusal to register, the applicant must also address the following issue.
Request for Additional Information:
In order to allow for proper examination of the application, including the final determination as to whether the mark is merely descriptive in relation to the goods/services, the applicant must submit samples of advertisements or promotional materials for the goods/services or, if unavailable, for goods/services of the same type. If such materials are not available, the applicant must describe the nature, purpose and channels of trade of the goods/services identified in the application. In addition, the applicant must state whether the mark has any meaning in relation to the goods/services. 37 C.F.R. §2.61(b); TMEP section 814.
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
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.
/Marlene D. Bell/
Law Office 105
Trademark Examiner
(571) 272-9291
HOW TO RESPOND TO THIS OFFICE ACTION:
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
MAIL-IT REQUESTED: MAY 25, 2005 10083K
CLIENT: PTO
LIBRARY: NEWS
FILE: ALLNWS
YOUR SEARCH REQUEST AT THE TIME THIS MAIL-IT WAS REQUESTED:
("BIG MOUTH" OR "WIDE MOUTH") W/10 BAG!
NUMBER OF STORIES FOUND WITH YOUR REQUEST THROUGH:
LEVEL 1... 188
LEVEL 1 PRINTED
THE SELECTED STORY NUMBERS:
4,31,56,60
DISPLAY FORMAT: 30 VAR KWIC
SEND TO: BELL, MARLENE
TRADEMARK LAW LIBRARY
2101 CRYSTAL PLAZA ARC
MAILBOX 314
ARLINGTON VIRGINIA 22202-4600
Copyright 2005 Copley News Service
Copley News Service
April 24, 2005 Sunday
SECTION: FAMILY; KIDS' HOME LIBRARY
LENGTH: 723 words
HEADLINE: Books to bond mother and child
By Lee Littlewood
BYLINE: Copley News Service
BODY:
... new J-41 line of hip, practical everyday sneakers, ($68), that come in several styles - mesh or lycra slip-ons, Mary Janes, comfy suede oxfords and much more.
Also practical and ever-so-functional is Jeep's line of diaper bags - especially their wide-mouth bag with Teflon-coated trim to resist staining. Available in black with red and tan trim, the durable canvas bag contains tons of pockets, double handles, non-slip shoulder strap and a stylish wide-mouth top, making the inside so easy to reach into.
The diaper bags are sold, very affordably, ($15 to $25), at Burlington Coat Factory stores or by calling (800) 929-4666; visit www.gear.jeep.com for information on strollers and shoes.
From Chronicle Books, some truly fun, insightful ...
Copyright 2004 by PRIMEDIA Business Magazines & Media Inc.
"All Rights Reserved"
Electrical Wholesaling
January 1, 2004
SECTION: PRODUCTS; ISSN: 0013-4430; Pg. 1
LENGTH: 1112 words
HEADLINE: Products
BODY:
... associated with oil, dirt and moisture. Each socket is equipped with an internal crush-proof reinforcing ring and an external grounding ring to provide additional crush resistance. Duraline
Circle 237 on Reader Service Card
Fabric tool bag is tough enough for industrial settings
The new UtilityBag features wide-mouth, two-zipper access to tools and a hard bottom sandwiched between layers of tough fabric that's not hard on surfaces. It includes two external pockets and an optional shoulder strap that makes it easy to carry up and ...
LOAD-DATE: January 26, 2004
Copyright 2002 The Indianapolis Star
All Rights Reserved
The Indianapolis Star
July 28, 2002 Sunday City final Edition
SECTION: FEATURES - INDIANA LIVING; Pg. 01J
LENGTH: 878 words
HEADLINE: Deciding when it's time for a beloved companion to die is a tough call.
BYLINE: BY ABE AAMIDOR ABE.AAMIDOR£INDYSTAR.COM
BODY:
The doctor and his assistant arrived at the Carmel home promptly at 8 a.m. He was dressed in a white lab coat and carrying a traditional wide-mouth leather bag.
The family of four sat in the great room on a long couch with their sickly old cat Nexxus.
Ari and Jennifer Gleckman, their 2-year-old son Ashton, and 7-year-old daughter Ariana, played with their Maine Coon ...
Copyright 2002 Gale Group, Inc.
ASAP
Copyright 2002 Reed Business Information
Packaging Digest
July 1, 2002
SECTION: No. 7, Vol. 39; Pg. 50; ISSN: 0030-9117
IAC-ACC-NO: 90220056
LENGTH: 1386 words
HEADLINE: IBC is the catch of the day; advertisement
BYLINE: Hartman, Lauren R.
BODY:
... for quick setup. The replaceable film bag is made of a three-ply construction including two 4-mil layers of linear low-density polyethylene laminated to an outer 4.3-mil coextruded biaxially oriented nylon layer. The bag measures 40x40x40 in. Snouted at the top, the bag has a wide mouth for easy filling.
Catch of the day
"When I went back to the hatcheries with the idea to use this tote, they were immediately ready to give it a try" Goldman says. "Now, they like the container so much, they're using it themselves to transport ...
[1]The American Heritage® Dictionary of the English Language, Third Edition copyright © 1992 by Houghton Mifflin Company. Electronic version licensed from INSO Corporation; further reproduction and distribution restricted in accordance with the Copyright Law of the United States. All rights reserved.
[2] Id.