UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/630175
APPLICANT: SurePrep, 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: TAX CONDUCTOR
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CORRESPONDENT’S REFERENCE/DOCKET NO: 4826
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 76/630175
The assigned examining attorney has reviewed the referenced application and determined the following.
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. Section 1052(d). TMEP section 1105.01.
Applicant must submit the following standard character claim: “The mark is presented in standard characters without claim to any particular font style, size, or color.” 37 C.F.R. §2.52(a).
The term "system" in the identification of goods is unclear and requires clarification. Applicant must rewrite the goods by listing the major parts or components of the system and describing the nature, purpose and use of the system. Applicant should use common generic terms when specifying the parts and/or components of the system. TMEP §1402.03. Please note, if the system is comprised of software, the applicant must state the function of the software.
Applicant may adopt the following identification of goods, if accurate:
Computer software system comprising [indicate items, e.g., computers, modems] for use in the accounting field in Class 9; or,
Computer software for [indicate function of software, e.g., for organizing financial data] for use in the accounting field in Class 9. TMEP § 1402.01.
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.
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.
The applicant must disclaim the descriptive wording "TAX" apart from the mark as shown. Trademark Act Section 6, 15 U.S.C. Section 1056; TMEP sections 1213 and 1213.02(a). The term “tax” is defined as “a contribution for the support of a government required of persons, groups, or businesses within the domain of that government.” Applicant software is used in connection with tax information, therefore the term TAX merely describes a feature of the software.
The Office can require an applicant to disclaim exclusive rights to an unregistrable part of a mark, rather than refuse registration of the entire mark. Trademark Act Section 6(a), 15 U.S.C. §1056(a). Under Trademark Act Section 2(e), 15 U.S.C. §1052(e), the Office can refuse registration of the entire mark where it is determined that the entire mark is merely descriptive, deceptively misdescriptive, or primarily geographically descriptive of the goods. Thus, the Office may require the disclaimer of a portion of a mark which, when used in connection with the goods or services, is merely descriptive, deceptively misdescriptive, primarily geographically descriptive, or otherwise unregistrable (e.g., generic). TMEP §1213.03(a). If an applicant does not comply with a disclaimer requirement, the Office may refuse registration of the entire mark. TMEP §1213.01(b).
A “disclaimer” is thus a written statement that an applicant adds to the application record that states that applicant does not have exclusive rights, separate and apart from the entire mark, to particular wording and/or to a design aspect. The appearance of the applied-for mark does not change.
A disclaimer does not physically remove the disclaimed matter from the mark, but rather is a written statement that applicant does not claim exclusive rights to the disclaimed wording and/or design separate and apart from the mark as shown in the drawing.
The following cases explain the disclaimer requirement more fully: Dena Corp. v. Belvedere Int’l Inc., 950 F.2d 1555, 21 USPQ2d 1047 (Fed. Cir. 1991); In re Kraft, Inc., 218 USPQ 571 (TTAB 1983); In re EBS Data Processing, Inc., 212 USPQ 964 (TTAB 1981); In re National Presto Industries, Inc., 197 USPQ 188 (TTAB 1977).
The computerized printing format for the Office’s Trademark Official Gazette requires a standardized format for a disclaimer. TMEP §1213.08(a)(i). The following is the standard format used by the Office:
No claim is made to the exclusive right to use “TAX” apart from the mark as shown.
See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).
/mls/
Michele-Lynn Swain
Examining Attorney, LO 116
PH(571) 272-9232
FX(571) 273-9116
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.