UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/624099
APPLICANT: Encoder Science Technology LLC
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: CHROMATIX
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CORRESPONDENT’S REFERENCE/DOCKET NO: 1056/41892/4
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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Serial Number 76/624099
The assigned Examining Attorney has reviewed the referenced application and determined the following.
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.
Registration is refused because the proposed mark, CHROMATIX merely describes a feature of the Applicant’s services. 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). 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 Applicant seeks to register the mark, CHROMATIX used in connection with CONSULTING, ANALYTICAL AND INFORMATION SERVICES IN SCREEN, DIGITAL AND PRINTING APPLICATIONS, in International Class 035.
The term, CHROMATIX is a novel spelling for the term, “CHROMATICS”, which describes the ability to retract light without spectral color separation. See attached definition. The term CHROMATIX(ICS) is used in connection with printing which is the subject matter of the Applicant’s services.The Trademark Examining Attorney refers to the excerpted articles from her search of the Internet using GOOGLE in which the term, CHROMATIX(ics) appears in articles in reference to color and printing services. See attached articles. The Trademark Trial and Appeal Board has held that materials obtained through computerized text searching are competent evidence to show the descriptive use of terms under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1). In re National Data Corp., 222 USPQ 515, 517 n.3 (TTAB 1984); TMEP §710.01(a).
In further support of the descriptiveness of the mark, CHROMATIX(ics), the Applicant’s specimen submitted with the application describes a feature of its services as the “science of accurate color reproduction”.
In this case, the mark, CHROMATIX is descriptive of a feature of the Applicant’s services and
for these reasons, registration is refused on the Principal Register.
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.
Advisory – Supplemental Register
Although the Trademark Examining Attorney has refused registration on the Principal Register, applicant may respond to the stated 2(e)1 Descriptiveness Refusal under Section 15 U.S.C. §1052(e)(1); TMEP §§1209 et seq. 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(b), 815 and 816 et seq.
If the Applicant chooses to respond to the refusal to register, the Applicant must also respond to the following requirements:
The wording “consulting services in screen, digital and printing applications” in the recitation of services needs clarification because it is too broad and belongs in International Class 040. The Applicant may substitute the word, “in the field of” for clarification, e.g., Consulting services in the field of screen, digital and printing applications”, if accurate. TMEP §§1402.01 and 1402.03. The wording, “analytical and information services..” needs clarification because it is indefinite. The Applicant may add the word, “Business” and may substitute the word, “analyses” in place of “analytical” for clarification, e.g., “Business analyses and information services in the field of screen, digital and printing application” if accurate. TMEP §1402.01. The Examining Attorney suggests the following, if accurate:
International Class 035 Business analyses and information services in the field of screen, digital and printing application
Please note that, while the identification of services may be amended to clarify or limit the services, adding to the services or broadening the scope of the services is not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, applicant may not amend the identification to include services that are not within the scope of the services set forth in the present identification.
The Trademark Examining Attorney examines identifications of goods and/or services for acceptability in accordance with the Rules of Practice in Trademark Cases and USPTO policies and procedures in effect at the time registration is sought. Descriptions of goods and/or services found in earlier-filed applications and registrations are not always determinative on the issue of acceptability of such identifications in the present time. For guidance on writing identifications of goods and/or services, please use the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm/html, which is frequently updated in accordance with prevailing rules and policies. See TMEP §§702.03(a)(iv) and 1402.04.
Applicant must clarify the number of classes for which registration is sought. The applicant submitted a fee for 1 International Class, and the Examining Attorney has identified services in 1 additional International Class. The submitted filing fee is insufficient to cover all the classes in the application. Applicant must either: (1) restrict the application to the number of classes covered by the fee already paid, or (2) pay the required fee for each additional class. 37 C.F.R. §2.86(a)(2); TMEP §§810.0l, 1401.04, 1401.04(b) and 1403.01.
If the Applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned Trademark Examining Attorney directly at the number below.
Odessa Bibbins
/Odessa Bibbins/
Trademark Attorney
Law Office 113
Telephone: 571-272-9425
Fax: 571-273-9425
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
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.