UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/619855
APPLICANT: AMERICAN TEXTILE COMPANY
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CORRESPONDENT ADDRESS:
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Commissioner for TrademarksP.O. Box 1451 Alexandria, VA 22313-1451
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MARK: ALLERGY RELIEF
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
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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EXAMINER’S AMENDMENT/PRIORITY 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. If applicant responds to the issues below within two months of the above mailing or e-mailing date, this case will be given priority handling.
OFFICE RECORDS SEARCH: The Office records have been searched and no similar registered or pending mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.
ADVISORY – AMENDMENTS TO GOODS/SERVICES: If the identification of goods and/or services has been amended below, any future amendments must be in accordance with 37 C.F.R. §2.71(a) and TMEP §1402.07(e).
QUESTIONS: Please contact the assigned trademark examining attorney with any questions.
Serial Number 76/619855
AMENDMENT(S) AUTHORIZED: As authorized by Jay Spiegel on June 15, 2005, the application is amended as noted below. If applicant disagrees with or objects to any of the amendments below, please notify the undersigned trademark examining attorney immediately. Otherwise, no response is necessary. TMEP §707.
The identification of goods and/or services for International Class 024 is amended to read as follows:
Fabric pillow protectors, namely, pillow covers, fabric mattress protectors, namely, mattress covers, quilted fabric mattress pads.
PLEASE NOTE: The applicant indicated it wanted to keep its bed pillow products in the application. In order to do so, the applicant must add an additional class to the application.
The applicant must respond to each refusal and/or requirement raised below. If the applicant responds to the issues below within two months of the above mailing or e-mailing date, this case will be given priority handling. TMEP §§708.01 and 708.05.
The examining attorney refuses registration on the Principal Register because the proposed mark merely describes the goods and/or services identified in the application. Trademark Act Section 2(e)(1), 15 U.S.C. Section 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). A mark that describes an intended user of a product or service is also merely descriptive within the meaning of Section 2(e)(1). Hunter Publishing Co. v. Caulfield Publishing Ltd., 1 USPQ2d 1996 (TTAB 1986); In re Camel Mfg. Co., Inc., 222 USPQ 1031 (TTAB 1984); In re Gentex Corp., 151 USPQ 435 (TTAB 1966).
The examining attorney must consider whether a mark is merely descriptive in relation to the identified goods and/or 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 (CCPA 1978); In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985). TMEP §1209.01(b).
The applicant applied to register ALLERGY RELIEF for fabric pillow protectors, fabric mattress protectors, quilted fabric mattress pads and bed pillows.
The Term “ALLERGY RELIEF” is Descriptive
The term “ALLERGY” is defined as “an abnormally high sensitivity to certain substances, such as pollens, foods, or microorganisms. Common indications of allergy may include sneezing, itching, and skin rashes.” American Heritage Dictionary of the English Language 4th ed., (2000). (See enclosed.) The term “RELIEF” refers to “the easing of a burden or distress, such as pain, anxiety, or oppression, or something that alleviates pain or distress.” American Heritage Dictionary of the English Language 4th ed., (2000). (See enclosed.) The examining attorney also refers to a search of the Google.com website in which a query of the terms “allergy relief” and “pillows” generated 45,100 hits. (Please find enclosed four (4) representative stories.)
The combination of the terms comprising the mark presumably describe, name, or inform the public about certain characteristics, features, and/or benefits of the applicant’s goods. Taken as a whole, the mark immediately conveys an idea regarding the type of goods the applicant will provide, namely, that the applicant’s bedding and pillow products are designed to alleviate the burden or distress in people who suffer from an abnormally high sensitivity to certain substances, such as pollens, foods, or microorganisms. Indeed, the applicant’s own website touts the ability of its bedding products to relieve the effect of allergens. (See enclosed.) Because the proposed mark taken as a whole immediately denotes without conjecture or speculation, a characteristic or feature of the goods the applicant will provide, the mark is descriptive of those identified goods. Accordingly, the examining attorney refuses registration on the Principal Register pursuant to Section 2(e)(1) of Trademark Act because the mark merely describes the goods identified in the application. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §§1209 et seq.
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.
Although the examining attorney has refused registration on the Principal Register, the applicant may respond to the stated refusal under Section 2(e)(1) by amending the application to seek registration on the Supplemental Register. Trademark Act Section 23, 15 U.S.C. §1091; 37 C.F.R. §§2.47 and 2.75(a); TMEP §§801.02, 815, and 816 et seq.
Please Note: A mark in an application under Trademark Act Section 1(b), 15 U.S.C. §1051(b), is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use under 37 C.F.R. §2.76 or statement of use under 37 C.F.R. §2.88 has been timely filed. 37 C.F.R. §§2.47(d) and 2.75(b); TMEP §§815.02, 816.02 and 1102.03. When an application is changed from the Principal Register to the Supplemental Register, the effective filing date of the application is considered to be the filing date of the amendment to allege use or statement of use and the examining attorney will conduct a new search of the Office records for conflicting marks. 37 C.F.R. §2.75(b); TMEP §§206.01, 816.02 and 1102.03.
Applicant Improperly Identified the Goods and/or Services
The applicant has provided this Office with the following identification: “fabric pillow protectors, fabric mattress protectors, quilted fabric mattress pads and bed pillows,” in International Class 024.
The wording in the identification of goods is unacceptable as indefinite. The current identification needs clarification because it could include goods classified in other international classes. TMEP §§1402.01 and 1402.03. Specifically, the applicant’s bed pillows are properly classified in International Class 020.
The applicant must amend the recitation to specify the common commercial name of the goods. If there is no common commercial name for the products, the applicant must adequately describe the nature of the goods and indicate their intended use(s). TMEP §§1402.01.
The applicant may amend the identification to substitute the following wording, if accurate:
Proposed identification for International Class 020:
Bed pillows.
If the applicant adopts the proposed identifications, the applicant must prosecute this application as a multiple-class application and pay additional filing fees. The filing fee for adding classes to an application is as follows:
(1) $325 per class, when the fees are submitted with a response filed online via the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html; and
(2) $375 per class, when the fees are submitted with a paper response.
37 C.F.R. §§2.61(a)(i) and (ii); TMEP §810.
Please Note: While an application may be amended to clarify or limit the identification of goods and/or services, adding to or broadening the scope of the identification goods and/or services is not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, the applicant may not amend the identification to include any products or services that are not within the scope of the goods and/or services originally set forth in the application.
THE OFFICE PROVIDES AN ONLINE IDENTIFICATION REFERENCE: In order to assist applicants properly identify goods and/or services, the Office now provides an online searchable database of acceptable identifications, along with their international classifications, in the Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.
No set form is required for response to this Office action. When responding to this Office action, the applicant must make sure to respond in writing to each refusal and requirement raised. The applicant must sign and date the response. In addition, the applicant should also include the following information on all correspondence with the Office: (1) the name and law office number of the examining attorney; (2) the serial number of this application; (3) the mailing date of this Office action; and, (4) the applicant's telephone number to speed up further processing.
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, registration owners, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at www.uspto.gov.
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
/Michael Tanner/
Michael Tanner
Trademark Attorney
Law Office 102
Telephone: 571-272-9706
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