Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

 

Serial Number  76/590564

 

SECTION 2(E)(1) DESCRIPTIVENESS REFUSAL

Registration was previously refused under Section 2(e)(1) of the Trademark Act.  That refusal is repeated and maintained.

 

The applicant’s goods are an interactive computer program for the communication of stock market analysis.  The applicant indicates in its response that the programs provided are live and it is clear from the specimens that the programs are live.  It is also clear from the specimens that live audio is provided.

 

The applicant argues that “While stock charts may be discussed, the mark does not describe the program or how it is conducted.”  Marks which describe the subject matter of publications, workshops and television programs are descriptive under Section 2(e)(1).  See e.g., In re Conus Communications Co., 23 USPQ2d 1717 (TTAB 1992) (ALL NEWS CHANNEL generic for a television channel broadcasting all news); In re Weather Channel, Inc., 229 USPQ 854 (TTAB 1986) (WEATHER CHANNEL merely descriptive of television program); In re National Recreation Association, Inc., 181 F.2d 221, 85 USPQ 281 (C.C.P.A. 1950) (THE PLAYGROUND descriptive of magazine); Sterling House, Inc. v. Dell Publishing Co., Inc., 174 USPQ 299 (S.D.N.Y. 1972) (DAYTIME TV descriptive of a magazine); In re Gracious Lady Service, Inc., 175 USPQ 380 (TTAB 1972) (CREDIT CARD MARKETING descriptive of periodic pamphlet); In re Nippon Kokan Kabushiki Kaisha, 171 USPQ 63 (TTAB 1971) (JAPAN STEEL NOTES descriptive of magazine); Reese Publishing Co., Inc. v. Hampton International Communications, Inc., 620 F.2d 7, 205 USPQ 585 (2nd Cir. 1980) (VIDEO BUYER’S GUIDE generic for a publication); CES Publishing Co. v. St. Regis Publications, Inc., 531 F.2d 11, 188 USPQ 612 (2d Cir. 1975) (CONSUMER ELECTRONICS generic as applied to publication); In re Institutional Investor, Inc., 229 USPQ 614 (TTAB 1986) (INTERNATIONAL BANKING INSTITUTE for organizing seminars for bank leaders of major countries held incapable); In re Harcourt Brace Jovanovich, Inc., 222 USPQ 820 (TTAB 1984) (LAW & BUSINESS incapable of distinguishing the services of arranging and conducting seminars in the field of business law); In re National Shooting Sports Foundation, Inc., 219 USPQ 1018 (TTAB 1983) (SHOOTING, HUNTING, OUTDOOR TRADE SHOW & CONFERENCE incapable for trade show).

 

The applicant’s mark describes a feature or characteristic of the goods in that it describes that the goods provide a live audio show which features information about stock charts.  The applicant indicates that charts are discussed and it is clear from the specimen that charts are a feature or subject matter of the goods and information provided.

 

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’s mark when viewed in relation to the identified goods describes a feature or characteristic of the goods and is therefore descriptive under Section 2(e)(1) of the Trademark Act.  The refusal under this section is maintained.

 

IDENTIFICATION OF GOODS

The proposed amendment of the identification is unacceptable because the wording “interactive program” designates goods/services that are not within the scope of the identification that was set forth in the application at the time of filing.  While an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §§1402.06 et seq. and 1402.07.

 

The applicant’s original identification specified “interactive computer program.”  By deleting the wording “computer” the applicant has broadened the identification.  The wording now would include other goods/services which would be classified in other classes, such as television programs, educational programs in the nature of classes, etc. 

 

The identification of goods must be amended back to “an interactive computer program used for the communication of stock market analysis.”

 

If the applicant seeks to amend the identification, the applicant may do so, but as indicated above, the applicant may only amend the identification to clarify or limit the identification, not to change, add or broaden the identification.

 

SPECIMEN

The requirement that the applicant submit an acceptable specimen is maintained.

 

The applicant argues that the specimen which was submitted “is also tantamount to an instruction manual, as it gives potential customers instruction to register, as well as providing benefits for the interactive show as used within the enabling TCNET software.”    There is nothing in the specimen which gives the purchaser instructions as to how to use the software.  The specimen which is of record with the Trademark Office is not an instruction manual and does not give any instruction as to how to use the product.

 

The specimen is an advertisement for a seminar or for providing information about stocks via a subscription service that uses software as a means of providing the service.  The applicant cannot amend the identification to providing seminars because this would be beyond the scope of the original identification.  However, if the applicant amends its identification to “Providing information about stocks and stock market analysis via a subscription service to a live interactive program that uses computer software as the means of providing the information” in Class 36, then the specimen refusal will be withdrawn.  This amendment would be within the scope of the original identification.

 

 

/Kelley L. Wells/

Kelley L. Wells

Trademark Attorney

Law Office 105

571-272-9312

 

 

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 has been 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.