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  76/603760

 

The assigned examining attorney has reviewed the referenced application and determined the following.

Search Results.

 

The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d). Trademark Manual of Examining Procedure Section 704.01, (3rd Edition January 2002).

 

Translation Required.

 

The applicant provided a translation of the term RECYCLER in French as meaning RECYCLE.  This may be insufficient if the entire mark has a translation.  Therefore, the applicant will submit a translation of all of the non-English wording in the mark.  37 C.F.R. Section 2.61(b); Trademark Manual of Examining Procedure Section 809, (3rd Edition January 2002).  The translation shall read as follows:  The English translation of CELL A’ RECYCLER is ___________.

 

If there is no English translation for this phrase, the applicant is required to state this fact for the record.

 

Please note that the translation will be searched in the Office records to determine if there are registered or pending marks which would bar registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d). Trademark Manual of Examining Procedure Section 704.01, (3rd Edition January 2002).

 

Significance of Wording.

 

The applicant must indicate whether the wording CELL in the mark has any significance in the relevant trade or industry or as applied to the identified services.  37 C.F.R. Section 2.61(b).

 

Disclaimer of Descriptive Wording.

Trademark Act Section 6(a), 15 U.S.C. Section 1056(a), states that the Commissioner may require the applicant to disclaim an unregistrable component of a mark.  Trademark Act Section 2(e), 15 U.S.C. Section 1052(e), bars the registration of a mark which is merely descriptive or deceptively misdescriptive, or primarily geographically descriptive of the services.  Therefore, the Commissioner may require the disclaimer of a portion of a mark which, when used in connection with the goods services, is merely descriptive or deceptively misdescriptive, or primarily geographically descriptive.  If an applicant does not comply with a disclaimer requirement, the examining attorney may refuse registration of the entire mark.  TMEP section 1213.01(b).

Regardless of the possible translation of the entire phrase, the wording RECYCLER in the applicant’s mark is merely descriptive of the applicant’s services because it describes in French one facet of the applicant’s services, namely, collecting batteries for recycling.  See the applicant’s translation statement and identification of services. The applicant must insert a disclaimer of RECYCLER in the application.  Trademark Act Section 6, 15 U.S.C. Section 1056; TMEP section 1208.

A disclaimer does not physically remove the disclaimed matter from the mark, but rather is a written statement that applicant does not claim exclusive rights to the disclaimed wording and/or design separate and apart from the mark as shown in the drawing.

The computerized printing format for the Trademark Official Gazette requires a standard form for a disclaimer.   TMEP section 1213.08(a)(i).  A properly worded disclaimer should read as follows:

No claim is made to the exclusive right to use RECYCLER apart from the mark as shown.

See In re Owatonna Tool Co., 231 USPQ 493 (Comm'r Pats. 1983).

Standard Character Claim Omitted.

 

In a standard character drawing, the mark on the drawing consists of only words, letters or numbers, but does not include any designs or claims as to particular font style, size, or color.  A registration for a mark using a standard character drawing affords protection not only for the standard character version of the mark, but for any possible renderings of the mark, as long as those renderings do not contain any design elements; i.e., a registered standard character drawing of the mark gives protection for display on the specimens in any lettering style.  A special-form drawing, on the other hand, shows the mark in stylized letters and/or with a design element and provides protection for only that specific rendering.  37 C.F.R. §2.52; Exam Guide 01-03, section I; See TMEP §§807.06 et seq. and TMEP §807.07 et seq.

 

In this application, the mark appears to be standard character drawing without any claim as to a standard character drawing.

 

The requirements for a standard character drawing submitted on paper are as follows:

 

·        a sheet of nonshiny white paper that is separate from the application and is 8 to 8.5 inches wide by 11 to 11.69 inches long (or 20.3 to 21.6 cm. wide and 27.9 to 29.7cm. long);

 

·         one of the shorter sides of the sheet should be regarded as its top edge;

 

·        include the caption “DRAWING PAGE” at the top of the drawing beginning one inch (2.5 cm.) from the top edge;

 

·        depict the mark in black print;

 

·        depict all letters and words in the mark in Latin characters;

 

·        depict all numerals in the mark in Roman or Arabic numerals; and

 

·        the mark includes only common punctuation or diacritical marks as shown on the Office’s official table of acceptable standard characters.

 

37 C.F.R. §§2.52(a) and 2.54; See TMEP §§807.01(a), 807.01(b), 807.01(c) and 807.06.

 

In the alternative, the requirements for a standard character drawing submitted through TEAS are as follows:

 

·        depict the mark in black print;

 

·        depict all letters and words in the mark in Latin characters;

 

·        depict all numerals in the mark in Roman or Arabic numerals; and

 

·        the mark includes only common punctuation or diacritical marks as shown on the Office’s official table of acceptable standard characters.

 

37 C.F.R. §§2.52(a).

 

The standard character drawing may be entered into the appropriate text field on the TEAS form or attached as a digitized image.  If applicant attaches a digitized image, then the image must be in .jpg format, formatted at no less than 300 and no more than 350 dots per inch; and no smaller in any direction than 250 pixels and no larger in any direction than 944 pixels.  37 C.F.R. §2.53(c).

 

Regardless of the submission method, the applicant must submit the following standard character claim:

 

The mark is presented in standard character format without claim to any particular font style, size, or color.

 

 37 C.F.R. §2.52(a).

 

Responding to this Office Action.

 

No set form is required for response to this Office action.  The applicant must respond to each point raised.  The applicant should simply set forth the required changes or statements and request that the Office enter them.  The applicant must sign the response.  In addition to the identifying information required at the beginning of this letter, the applicant should provide a telephone number to speed up further processing.

 

In all correspondence to the Patent and Trademark Office, the applicant should list the name and law office of the examining attorney, the serial number of this application, the mailing date of this Office action, and the applicant's telephone number.

 

If the applicant has any questions or needs assistance in responding to this Office Action, please telephone the assigned examining attorney. However, please note that during the transition to the new USPTO campus (see notice below), you can receive a response faster by sending me an email at john.dalier@uspto.gov with any questions regarding this Office Action.  Note that this email address is not for responses to Office Actions, just questions about Office Actions.

 

Copies of Documents

 

The applicant may view and download any or all documents contained in the electronic file wrapper of all pending trademark applications, as well as many registrations via the Trademark Document Retrieval (TDR) system available online at: <http://portal.gov.uspto.report/external/portal/tow>.  Currently, you can access all pending applications and all Madrid Protocol filings, and also many registrations, via TDR.  The USPTO is in the process of converting all remaining registrations into a digital format, to permit future TDR access.  This conversion process is expected to take several years.

 

Downloads are converted into PDF format and may be viewed with any PDF viewer, including the free Adobe Reader.

 

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.

 

/John D. Dalier/

Trademark Examining Attorney

Law Office 106; 571 272 9150

 

 

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.