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  76/606608

 

This letter responds to applicant’s communication filed on August 15, 2005 .

 

The amendment to the identification of goods is accepted.

 

Further examination of the application has revealed the need for the following refusals and requirement.  The examining attorney apologizes for the inconvenience caused applicant by the failure to raise these issues in the first Office action.

 

Applicant’s preliminary amendment to its owner identification has been entered.

 

Mere Descriptiveness Refusal – Section 2(e)(1)

 

Applicant seeks to register CLEAR SPAN for metal window shutters.

 

Registration is refused because the proposed mark potentially merely describes a feature of applicant’s goods; i.e., that they are designed to fit a “clear span.”  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). 

 

Attached to this Office action are two examples of uses of the phrase “clear span” used to describe windows (www.helix-industries.com, www.findarticles.com; Google search engine; September 26, 2005).  Applicant’s shutters could be designed to fit clear span windows or spaces.

 

The following refusal is issued in the alternative.

 

Deceptively Misdescriptive Refusal – Section 2(e)(1)

 

Registration is refused because the proposed mark is potentially deceptively misdescriptive of applicant’s goods and/or services.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §1209.04.

 

A mark is deceptively misdescriptive if it describes an ingredient, quality, characteristic, function or feature of the relevant goods and/or services, and the description conveyed by the mark is both false and plausible.  In re Woodward & Lothrop Inc., 4 USPQ2d 1412 (TTAB 1987) (CAMEO held deceptively misdescriptive of jewelry); In re Ox‑Yoke Originals, Inc., 222 USPQ 352 (TTAB 1983) (G.I. held deceptively misdescriptive of gun cleaning patches, rods, brushes, solvents and oils); TMEP §1209.04.

 

If applicant’s window shutters are not designed to fit clear span windows or spaces, the proposed mark is deceptively misdescriptive.

 

Although the trademark examining attorney has refused registration, applicant may respond to the refusals 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).

 

A.  Standard Character Claim

 

Applicant must submit the following standard character claim:  “The mark consists of standard characters without claim to any particular font, style, size, or color.”  37 C.F.R. §2.52(a); TMEP §807.03(a).

 

B.  Significance

 

Applicant must specify whether “CLEAR SPAN” has any non-trademark significance in the building, construction or window trade or industry, or with respect to the goods.  37 C.F.R. §2.61(b).  For example, are the goods designed to fit between two structural supports; i.e., to fit in a clear span or to fit a clear span window?  Is the term “clear span” commonly used in either the building or window industry to indicate a particular spacing?

 

If the applicant has any questions regarding this Office action, please telephone the assigned examining attorney.

 

 

/Jeri Fickes/

Trademark Examining Attorney

Law Office 108

571/272-9157

571/273-9108 fax

 

 

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.