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  76/619346

 

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

 

Registration Refused Under Section 2(e)(1), Merely Descriptive

The examining attorney refuses registration on the Principal Register because the proposed mark merely describes the goods.  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/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 examining attorney must consider whether a mark is merely descriptive in relation to the identified goods/services, not in the abstract.  In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (C.C.P.A. 1978); In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985); In re American Greetings Corp., 226 USPQ 365 (TTAB 1985).  TMEP §1209.01(b). 

 

Applicant seeks to register the term INTEGRATED MEDIA CONTROLS on the Principal Register for distribution and control network for multi-zone and multi-source audio and video signals.  The proposed mark merely identifies the purpose of the goods – to provide and integrated format for media controls.  Please see below for excerpts from a google search evidencing the descriptiveness of the proposed mark as applied to the goods.

 

ATUS News Online
... each of these new classrooms has design improvements, including more flexibility
in classroom seating and easier-to-use integrated media controls. ...
west.wwu.edu/atus_news_online/ fall2004/classroom_technology.shtml - 14k - Cached - Similar pages

SCC - Event Facilities
Podium with integrated media controls; Videocassette recorder/player; Audiocassette
recorder/player; Laserdisk player; Connections for laptop PC or ...
www.scc.rutgers.edu/scchome/facilities/facilities.htm - 31k - Cached - Similar pages

Telecommunications/Lecture Hall
Podium with integrated media controls: Videocassette recorder/player: Audiocassette
recorder/player: Laserdisk player: Connections for laptop PC or ...
www.scc.rutgers.edu/scchome_old/serv02.htm - 5k - Cached - Similar pages

www.GameAxle.com
... Improved mp3 music features including integrated media controls and playlist
functionality; Batch deletion/clearing of map levels added ...
www.gameaxle.com/cgi-bin/ga_pages.pl?updates - 7k - Cached - Similar pages

Gadgets & Tech
... Skies that Change in Real-Time; Drag And Drop From Windows and the Web to 3DNA;
Use Integrated Media Controls to Play Music; Play Built-in 3D Games ...
www.wugnet.com/affiliates/default.asp?pageid=4 - 18k - Cached - Similar pages

The Internet Cafe - View Single Post - 3dna
... Photos on the Walls * Enjoy Animated Skies that Change in Real-Time * Drag And Drop
From Windows and the Web to 3DNA * Use Integrated Media Controls to Play ...
www.thetechguys.co.uk/retreat/ showpost.php?p=7334&postcount=1 - 16k - Supplemental Result - Cached - Similar pages

 

Accordingly, the proposed mark is merely descriptive of the goods.

 

Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

 

Informalities

If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informality.

 

Identification of Goods

The current wording used to describe the goods needs clarification because the composition of the network must be identified by its commmon commercial name. Applicant may adopt the following identification of goods, if accurate:  electronic control device for distribution and control of multi-zone and multi-source audio and video signals.  TMEP §1402.01.

 

Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.

 

For assistance with identifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.

 

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. §1052(d).  TMEP §704.02.

 

 

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.

 

 

/Patrick Shanahan/

USPTO, L.O. 116

(571) 272-9216

fax (571) 273-9116

 

 

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.