Offc Action Outgoing

[Important Email Information]

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  76/639325

 

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. §1052(d).  TMEP §704.02.

 

DOES NOT FUNCTION AS A TRADEMARK

Registration is refused because the proposed mark, as used on the specimen of record, does not function as a trademark to indicate the source of the identified goods.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051, 1052 and 1127; In re Remington Products Inc., 3 USPQ2d 1714 (TTAB 1987); TMEP §§1202 et seq.

 

The proposed specimen consists of a screenshot from a web based computer program of an elongated rectangle; the far right portion of the rectangle is green with the word "search" therein.  The proposed mark is non-distinctive and does not function as a trademark on the specimen because it is a basic rectangle design without any distinctive features, with the addition of highly descriptive wording.  Numerous search engines and software programs have similarly designed search boxes.  Please see attached.

Although a background display that is sufficiently distinctive or unique so as to create a commercial impression separate and apart from the remainder of the mark may be registered absent a showing of secondary meaning, such is not the case in the present situation.  See In re Haggar Company, 217 USPQ 81 (TTAB 1982) and cases cited therein.

 With respect to the registrability of non-distinctive background designs, “[i]t is settled that common basic shapes such as circles, ovals, triangles, diamonds, stars and other geometric designs, when used as vehicles for the display of word or letter marks, are not regarded as indicia of origin for the goods to which they are applied in the absence of a showing of secondary meaning in the design alone.”  Permatex Company, Inc. v. California Tube Products, Inc., 175 USPQ 764, 766 (TTAB 1972).

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.

 

DISCLAIMER

The applicant must disclaim the descriptive wording "SEARCH" apart from the mark as shown. Trademark Act Section 6, 15 U.S.C. Section 1056; TMEP sections 1213 and 1213.02(a).  The wording is merely descriptive because it immediately describes a characteristic, ingredient, quality, purpose, use, feature or function of the identified goods.  The dictionary defines “search” as to look into or over carefully or thoroughly in an effort to find or discover something.  Please see attached.  The wording is also defined as “to look for specific data in a file or an occurrence of text in a file. A search implies sequential scanning of content or indexes in order to find the results rather than a direct lookup. A search on the Web yields a list of Web pages that contain all the words in the search criteria.”  Please see attached.

 

The computerized printing format for the Trademark Official Gazette requires a standard form for a disclaimer.   TMEP section 1213.09(a)(i).  A properly worded disclaimer should read as follows:

 

            No claim is made to the exclusive right to use “SEARCH” apart from the mark as shown.

 

See In re Owatonna Tool Co., 231 USPQ 493 (Comm'r Pats. 1983).

 

COLOR CLAIM AND DESCRIPTION INCOMPLETE – FAIL TO REFERENCE ALL COLORS IN MARK

The color claim and color description do not list all the colors appearing in the drawing of the mark.  Applicant must submit a complete color claim and color description of the mark that reference all the colors appearing in the drawing of the mark.  37 C.F.R. §2.52(b)(1); TMEP §807.07(a)(ii). 

 

The following color claim and color description are suggested: 

 

The color(s) green, white and black is/are claimed as a feature of the mark.

 

The mark consists of an elongated rectangle. The far right portion of the rectangle is green with the word "Search” therein in the color white.  The left portion of the rectangle is in the color white. The whole rectangle is outlined in the color black. 

 

 

 

 

 

/CGJ/

Charles G. Joyner, Jr.

Trademark Attorney

Law Office 107

(571) 272-9411

Fax: (571) 273-9112

 

 

 

 

 

 

 

 

 

 

 

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.

 

 

Note:

 

In order to avoid size limitation constraints on large e-mail messages, this Office Action has been split into 3 smaller e-mail messages.  The Office Action in its entirety consists of this message as well as the following attachments that you will receive in separate messages:

 

Email 1 includes the following 5 attachments  

1. 76639325#2-1  

2. 76639325#2-2  

3. duplicate name 74073 76639325#2-1  

4. duplicate name 74073 76639325#2-2  

5. 76639325#2-3  

 

Email 2 includes the following 10 attachments  

1. 76639325#3-1  

2. 76639325#3-2  

3. 76639325#4  

4. 76639325#5  

5. 76639325#6-1  

6. 76639325#6-2  

7. 76639325#7-1  

8. 76639325#7-2  

9. 76639325#7-3  

10. 76639325#8  

 

Email 3 includes the following 2 attachments  

1. 76639325#9-1  

2. 76639325#9-2  

 

Please ensure that you receive all of the aforementioned attachments, and if you do not, please contact the assigned-examining attorney.