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  76/632730

 

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

 

Search Results

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.  However, applicant must respond to the following refusal and requirements.

 

Section 2(e)(1) - Descriptive Refusal

This refusal applies to the goods classified in International Class 010 only.

 

Registration is refused as to the goods classified in International Class 010 because the proposed mark merely describes a characteristic of applicant’s goods.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §§1209 et seq.  In the applied for mark TINY, the term “TINY” is descriptive for the small size of dental implants and dental implant parts, which are applicant’s goods.  See the attached website evidence in which dental implants are shown to be of a small size.

 

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 §1209.01(b). 

 

The determination of whether a mark is merely descriptive is considered in relation to the identified goods, not in the abstract.  In re Polo International Inc., 51 USPQ2d 1061 (TTAB 1999) (Board found that DOC in DOC-CONTROL would be understood to refer to the “documents” managed by applicant’s software, not “doctor” as shown in dictionary definition); In re Digital Research Inc., 4 USPQ2d 1242 (TTAB 1987) (CONCURRENT PC-DOS found merely descriptive of “computer programs recorded on disk;” it is unnecessary that programs actually run “concurrently,” as long as relevant trade clearly uses the denomination “concurrent” as a descriptor of this particular type of operating system); In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985); In re American Greetings Corp., 226 USPQ 365, 366 (TTAB 1985) (“Whether consumers could guess what the product is from consideration of the mark alone is not the test”); TMEP §1209.01(b).

 

A term that serves as the common descriptor of a key ingredient, characteristic or feature of the goods is also generic and thus incapable of distinguishing source.  A term need not relate solely to the name of the goods or services in order to be held incapable of serving as an indicator of origin.  A.J. Canfield Co. v. Honickman, 808 F.2d 291, 1 USPQ2d 1364 (3rd Cir. 1986) (CHOCOLATE FUDGE generic for diet sodas); Miller Brewing Co. v G. Heileman Brewing Co., 561 F.2d 75, 80, 195 USPQ 281, 285 (7th Cir. 1977) (LITE generic for beer), cert. denied, 434 U.S. 1025, 196 USPQ 592 (1978); In re Sun Oil Co., 426 F.2d 401, 165 USPQ 718 (C.C.P.A. 1970) (CUSTOM BLENDED generic for gasoline);  In re Helena Rubenstein, Inc., 410 F.2d 438, 161 USPQ 606 (C.C.P.A. 1969) (PASTEURIZED for face cream incapable); Roselux Chemical Co, Inc. v. Parsons Ammonia Co., Inc., 299 F.2d 855, 132 USPQ 627 (C.C.P.A. 1962) (SUDSY generic for ammonia); In re Reckitt & Colman, North America Inc., 18 USPQ2d 1389 (TTAB 1991) (PERMA PRESS generic for soil and stain removers); In re Ricci-Italian Silversmiths, Inc., 16 USPQ2d 1727 (TTAB 1990) (ART DECO generic for flatware); In re Bonni Keller Collections Ltd., 6 USPQ2d 1224 (TTAB 1987) (LA LINGERIE generic for stores that sell lingerie); In re National Patent Development Corp., 231 USPQ 823 (TTAB 1986) (ULTRA PURE for interferons for medical use incapable); In re Wickerware, Inc., 227 USPQ 970 (TTAB 1985) (WICKERWARE generic for mail order and distributorship services in the field of wicker furniture and accessories); In re Hask Toiletries, 223 USPQ 1254 (TTAB 1984) (HENNA 'N' PLACENTA generic of ingredients for hair conditioner); In re Bee Pollen From England Ltd., 219 USPQ 163 (TTAB 1983) (BEE POLLEN FROM ENGLAND for bee pollen incapable).

 

The mark “TINY” is refused registration as to the goods identified in International Class 010 because the mark is descriptive of the size of the goods.  This refusal does not apply to the goods identified in International Classes 001 and 005.

 

 

 

Supplemental Register

Although an amendment to the Supplemental Register would normally be an appropriate response to this refusal, such a response is not appropriate in the present case until an acceptable allegation of use is filed.  The instant application was filed under Trademark Act Section 1(b), 15 U.S.C. §1051(b), and is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use under 37 C.F.R. §2.76 has been timely filed.  37 C.F.R. §2.47(d); TMEP §§815.02, 816.02 and 1102.03.

 

If applicant files an allegation of use and also amends to the Supplemental Register, please note that the effective filing date of the application will then be the date of filing of the allegation of use.  37 C.F.R. §2.75(b); TMEP §§206.01 and 816.02.

 

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

 

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

 

Identification of Goods

Applicant must amend the identification of goods for International Classes 001 and 010 to clarify the goods.

 

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.

 

Goods in International Class 001

The wording "industrial adhesives" in the identification of goods needs clarification because the purpose or use of these goods is not stated, and the goods as identified could include goods classified in other international classes.  Applicant must amend the identification of goods to specify the common commercial or generic name for the goods.  If there is no common commercial or generic name for the product, then applicant must describe the product and intended consumer as well as its main purpose and intended uses.  TMEP §1402.01.

 

Applicant may change this wording to either “industrial adhesives for use in coating and sealing” or “adhesives for general industrial use”, if accurate.  TMEP §1402.01.

 

Goods in International Class 010

The wording "components" in the identification of goods needs clarification to identify each item by its common generic name, or by describing the nature, purpose and intended use of each item.  TMEP §§1402.01 and 1402.03.  Applicant may change this wording to "components, namely, _________________", and indicate the specific items.

 

Please note that applicant may amend the identification to list only those items that are within the scope of the goods set forth in the application.  37 C.F.R. §2.71(a); TMEP §§1402.01 and 1402.03(a).

 

Drawing

Applicant must submit the following standard character claim:  “The mark consists of standard characters without claim to any particular font, style, size, or color.”  37 C.F.R. §2.52(a); TMEP §807.03(a).

 

Significance of Mark

Applicant must specify whether the wording “TINY” has any significance in the relevant trade or industry or as applied to the goods described in the application.  37 C.F.R. §2.61(b).

 

 

 

 

 

/Kaelie E. Kung/

Trademark Examining Attorney

Law Office 103

571-272-8265

 

 

 

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 has been 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.