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  76/597378

 

This letter responds to the applicant’s communication filed on March 31, 2005.  The applicant’s standard drawing claim is acceptable. 

 

The examining attorney has carefully considered the arguments contained in the applicant’s response concerning the Section 2(e)(1) refusal, and finds them unpersuasive.  Therefore, the refusal under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1), is now made FINAL for the reasons set forth below.  37 C.F.R. §2.64(a).

 

In the present case, the applicant seeks to register the term “TICKER” for “Watches, clocks, and chronometers of all descriptions.”  The examining attorney has made of record evidence which defines the term “TICKER” as “a watch.”  Please note, descriptiveness is considered in relation to the relevant goods.  The fact that a term may have different meanings in other contexts is not controlling on the question of descriptiveness.  In re Chopper Industries, 222 USPQ 258 (TTAB 1984); In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979); In re Champion International Corp., 183 USPQ 318 (TTAB 1974); TMEP §1209.03(e).

 

A term is considered merely descriptive within the meaning of Section 2(e)(1), if, when considered in conjunction with the goods with which it is intended to be used, it immediately and forthwith conveys information about the nature of the goods, or about a quality, characteristic, feature, purpose or function thereof.  See In re MetPath Inc., 223 USPQ 88 (TTAB 1984).  It is not necessary that the term describe all of the properties or functions of the goods or services in order for the term to be considered merely descriptive thereof; rather it is sufficient if the term describes a significant attribute or idea about them. 

 

The applicant urges the examining attorney to think “outside” the box.  The applicant argues that the applicant’s goods are time pieces which employ heart imagery.  This may be true; however, the applicant’s identification does not reflect this.  If the applicant were to amend the identification of goods to include a more precise and restrictive identification of goods, one which employs language to further define the applicant’s “heart imagery,” the applicant’s double entendre argument might be persuasive.

 

For instance, the applicant may adopt the following identification of goods if accurate.  “Watches, clocks and chronometers featuring human heart motifs in International Class 14.”

 

However, descriptiveness is determined in relation to the goods for which registration is sought.  In the present case, the identification of goods are listed as “watches, clocks, and chronometers of all descriptions.”  As such, the term “TICKERS” presents no double entendre, and is merely descriptive of the goods.

 

Final Refusal

If the applicant fails to respond to this final action within six months of the mailing date, the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  The applicant may respond to this final action by: 

 

(1)     submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); and/or

(2)     filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).

 

In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2).  37 C.F.R. §2.64(a).  See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matter.  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

 

 

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.

 

 

/G. Fosdick/

Geoffrey Fosdick

Trademark Attorney

Law Office 111

(540) 851-0865

 

 

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.