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  76/633016

 

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

 

MERELY DESCRIPTIVE REFUSAL

 

Registration is refused because the proposed mark merely describes a characteristic, function and feature of the applicant’s 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 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). 

 

The applicant has applied to register the mark “SILICON HARNESS” for “electrical apparatus, namely, computers and associated wires and cabling; electrical circuits, power cables and buses, and data buses for power distribution and network control; electrical cables and wires for carrying combined data and electrical signals; electronic communication circuits; power switches; fiber optic cables.”  The terms that comprise the applicant’s mark are respectively defined as follows:

 

sil·i·con (sîl¹î-ken, -kòn´) noun Symbol Si

A nonmetallic element occurring extensively in the earth's crust in silica and silicates, having both an amorphous and a crystalline allotrope, and used doped or in combination with other materials in glass, semiconducting devices, concrete, brick, refractories, pottery, and silicones. Atomic number 14; atomic weight 28.086; melting point 1,410°C; boiling point 2,355°C; specific gravity 2.33; valence 4.[1]

 

har·ness (här¹nîs) noun 

1.  A bundle of electrical wires.[2]

 

wiring harness noun

1. A system of insulated conducting wires bound together with insulating materials. [3]

 

Based on the foregoing, the applicant’s proposed mark is considered merely descriptive in that it immediately describes a characteristic, function and feature of the relevant goods, namely that the goods include wiring harnesses comprised of silicone.  Consequently, registration is refused.

 

NO CONFLICTING MARKS NOTED

 

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.

 

OTHER ISSUES

 

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

 

STANDARD CHARACTER CLAIM REQUIRED

 

The Trademark Rules pertaining to drawings were amended on November 2, 2003.  For applications filed on or after November 2, 2003, applicants must follow the new standard character drawing rules in force. If the application does not include a standard character claim, but the mark is shown in a format that previously would have been considered "typed" (i.e., the mark is shown in all capital letters, or the mark is specified as "typed" in the body of the application, on a separate drawing page, or on a cover letter filed with the application), then the drawing of the mark shall be treated as a standard character drawing. Accordingly, because the applicant in this case has submitted a "typed" mark, the applicant must submit the following standard character claim:  “The mark is presented in standard character format without claim to any particular font style, size, or color.”  37 C.F.R. §2.52(a).

 

REQUIREMENT FOR PARTICULAR INFORMATION

 

The applicant must indicate the relevance of the wording “SILICONE HARNESS,” individually and collectively in its mark, including whether such wording, individually or collectively, significance in relation to the goods.  The applicant must also indicate whether “SILICONE” or “HARNESS” describes an ingredient, quality, characteristic, function, feature, purpose and/or use of the goods.  37 C.F.R. Section 2.61(b); TMEP Section 808.03(c). 

 

Additionally, the applicant must submit product information for the identified goods. This may take the form of a fact sheet, an instruction manual, and/or advertisements or promotional materials.  If such materials are not available, the applicant must submit a detailed description of the goods, including but not limited to their salient features, purpose, prospective purchasers, and channel of trade. The applicant must also specifically answer the following questions:

 

1. Are any of the applicant’s goods comprised in whole or in part of silicone?
2. Are any of the applicant’s wire goods bundled?

 

The applicant should note that conclusory statements concerning the descriptiveness standard will not be sufficient to meet this requirement for information.  The required information is necessary to evaluate accurately and fully the registrability of the applicant’s proposed designation. 37 C.F.R. Section 2.61(b); TMEP sections 1103.04 and 1105.02.  If the applicant does not provide the information required herein, registration may be refused.  The Trademark Rules of Practice have the effect of law and failure to comply with a request for information is grounds for refusal of registration.  See, e.g., In re Joseph Edward Page, 1999 TTAB LEXIS 229 (TTAB 1999); In re Babies Beat, Inc., 13 USPQ2d 1729 (TTAB 1990); In re Big Daddy's Lounges, Inc., 200 USPQ 371 (TTAB 1978); In re Air Products and Chemicals, Inc., 192 USPQ2d 84, 85-86 (TTAB 1976); and In re Morrison Industries, Inc., 178 USPQ 432, 433-34 (TTAB 1973).

 

UNACCEPTABLE IDENTIFICATION OF GOODS

 

In the identification of goods, applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases.  If applicant chooses to use indefinite terms, then such terms must be followed by the word "namely" and a list of the specific goods identified by their common commercial or generic names.  TMEP §§1402.01 and 1402.03(a).

 

The application lists the goods, “electrical apparatus, namely, computers and associated wires and cabling; electrical circuits, power cables and buses, and data buses for power distribution and network control; electrical cables and wires for carrying combined data and electrical signals; electronic communication circuits; power switches; fiber optic cables” in International Class 9.  There is certain wording in the identification of goods that is indefinite. TMEP section 1402.01. To follow are the examining attorney’s suggestions concerning the applicant’s identification of goods.  The applicant may amend the application pursuant to the examining attorney’s suggestions, if accurate:

 

“Electrical apparatus, namely, computers and associated ___________ (must specify type of wires, e.g., electrical, power, resistance) wires and ______________ (must specify type of cables, e.g., computer, electrical, coaxial, Ethernet) cables; electrical circuits _____________ (indicate purpose/use of electrical circuits, e.g., for use in amusement game machines for reproducing music, speech and special effects), power cables, power buses, namely, ______________ (must specify nature and purpose of buses, e.g., parallel electrical circuits for electrical conduction in computers), and data buses, namely ________________ (must specify nature of power buses) for power distribution and __________ (indicate type of network, e.g., computer, telecommunications) network control; electrical cables and _____________ (must specify type of wires, e.g., electrical, power, resistance) wires for carrying combined data and electrical signals; electronic communication circuits, namely ___________ (must specify type of electronic communication circuits, e.g., decision circuits, integrated circuits); power switches; fiber optic cables” in International Class 9.

 

It is strongly recommended that the applicant review the Office’s Trademark Manual of Acceptable Identifications and Classifications for Goods and Services which is available on-line at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual.

 

APPLICANT MAY NOT EXCEED SCOPE OF PRESENT IDENTIFICATION OF GOODS

 

While an application may be amended to clarify or limit the identification of goods, additions to the identification are not permitted.  37 C.F.R. Section 2.71(b).  TMEP section 1402.06.  Therefore, the applicant may not amend to include any goods that are not within the scope of the present identification.

 

CHANGE OF ADDRESS (FOR INFORMATION ONLY)

 

Applicants may now file address change correspondence via a new form on TEAS.  Address changes may be performed on up to 20 cases at a time.  The Trademark Office strongly encourages applicants to use this form, available online at: http://eteas.gov.uspto.report/V2.0/ca200/WIZARD.htm

 

 

/Sonya B. Stephens/

Trademark Attorney

Law Office 108

(571) 272-9352 phone

(571) 273-9108 fax*

*fax no. for official responses only

 

 

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.