UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/614444
APPLICANT: III-N Technology, Inc.
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: IC-LED
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CORRESPONDENT’S REFERENCE/DOCKET NO: 3498
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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MAILING/E-MAILING DATE INFORMATION: If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.
Serial Number 76/614444
This letter responds to the applicant's communication filed on November 6, 2005.
The applicant has amended the identification of goods and argued against the refusal under Section 2(e)(1). The amended identification is acceptable.
The examining attorney has considered the applicant's arguments regarding the refusal under Section 2(e)(1) carefully but found them unpersuasive. Accordingly, the following refusal and requirement are maintained and made FINAL.
Registration was refused under Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1), because the subject matter for which registration is sought is merely descriptive of the identified goods. For the reasons below, the refusal under Section 2(e)(1) is maintained and made FINAL.
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. 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 section 1209.01(b).
The applicant has applied to register “IC-LED” for lighting products, namely light bulbs.
The term “IC” refers to an “integrated circuit.” In addition, the term “LED” refers to “light emitting diode” [See the dictionary evidence from Office action 1.] The applicant clearly indicates that the goods are comprised of an integrated circuit (IC) with a light emitting diode (LED). Thus, the proposed mark “IC-LED” merely describes a feature or characteristic of the relevant goods. Accordingly, the proposed mark is properly refused registration under Section 2(e)(1).
The applicant suggests that the proposed mark is not merely descriptive because a certain amount of imagination is required to ascertain that the goods are an integrated circuit with a light emitting diode. The examining attorney disagrees with the applicant’s suggestion. A mark that combines descriptive terms is generally not registrable unless the composite creates a unitary mark with a unique, non-descriptive meaning or commercial impression. In re Tower Tech, Inc., 64 USPQ2d 1314 (TTAB 2002) (SMARTTOWER merely descriptive of “commercial and industrial cooling towers and accessories therefor, sold as a unit”); In re Sun Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001) (AGENTBEANS held merely descriptive of “computer software for use in the development and deployment of application programs on a global computer network”); In re Shiva Corp., 48 USPQ2d 1957 (TTAB 1998) (TARIFF MANAGEMENT held merely descriptive for “computer hardware and computer programs to control, reduce and render more efficient wide area network (WAN) usage and printed user manuals sold therewith”); In re Putnam Publishing Co., 39 USPQ2d 2021 (TTAB 1996) (FOOD & BEVERAGE ON-LINE merely descriptive of “a news and information service updated daily for the food processing industry, contained in a database”); In re Copytele, Inc., 31 USPQ2d 1540 (TTAB 1994) (SCREEN FAX PHONE merely descriptive of “facsimile terminals employing electrophoretic displays”); In re Digital Research Inc., 4 USPQ2d 1242 (TTAB 1987) (CONCURRENT DOS and CONCURRENT PC-DOS held merely descriptive of “computer programs recorded on disk”). Moreover, the fact that an applicant may be the first and sole user of a merely descriptive or generic designation does not justify registration where the evidence shows that the term is merely descriptive of the identified goods and/or services. In re Acuson, 225 USPQ 790 (TTAB 1985) (COMPUTED SONOGRAPHY descriptive of ultrasonic imaging instruments); In re National Shooting Sports Foundation, Inc., 219 USPQ 1018 (TTAB 1983) (SHOOTING, HUNTING, OUTDOOR TRADE SHOW AND CONFERENCE held apt descriptive name for conducting and arranging trade shows in the hunting, shooting and outdoor sports products field); TMEP §1209.03(c). As more fully explained above, the proposed mark is clearly merely descriptive for the relevant goods.
For the foregoing reasons, the refusal of registration on the Principal Register under Section 2(e)(1) is made FINAL.
The only appropriate responses to a final action are either (1) compliance with the outstanding requirements, if feasible, or (2) filing of an appeal to the Trademark Trial and Appeal Board. 37 C.F.R. Section 2.64(a). If the applicant fails to respond within six months of the mailing date of this refusal, this Office will declare the application abandoned. 37 C.F.R. Section 2.65(a).
Scott Baldwin /sb/
571-272-9398
LO: 112
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