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. 

 

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

Serial Number  76/639325

 

This letter responds to applicant’s communication filed on June 2, 2006.  Applicant’s disclaimer of

 

In its response, applicant provided a color claim and a disclaimer of “SEARCH,” and argued against the examining attorney’s failure-to-function refusal.  The color claim and disclaimer are acceptable and have been entered into record.  For the reasons set forth below, the refusal is now made FINAL under Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051, 1052 and 1127, for failure to function as a trademark as used on the specimen(s) of record.  In addition, the following requirement is now made FINAL:  color description of the mark.  37 C.F.R. §2.64(a) and §2.52(b)(1); TMEP §807.07(a)(i). 

 

Failure to Function as a Trademark

In the previous Office action, the Examining Attorney refused registration because the proposed mark does not function as a trademark.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051, 1052 and 1127.  The examining attorney maintains this refusal.

 

The proposed mark neither identifies and distinguishes the goods of the applicant from those of others nor indicates their source.  In Re Remington Products Inc., 3 USPQ2d 1714 (TTAB 1987).  TMEP §§1202 et seq.  Please note that the proposed mark does not function as a trademark because the specimen is unacceptable as evidence of actual trademark use; therefore, the proposed mark cannot identify and distinguish the applicant's goods from those of others nor indicate their source. 

 

The specimen is unacceptable as evidence of actual trademark use because it is merely a design that corresponds with the “Search the Web:” command online.  It is unacceptable as evidence of actual trademark use because it does not show use of the mark on or affixed to the identified goods.

 

A “trademark” is a word, name, symbol, device or any combination of these used by a person or which a person has a bona fide intention to use in commerce to identify goods and distinguish them from those manufactured or sold by others (emphasis added).  In other words, a trademark serves as a source-identifier for specific goods.  Trademark Act Section 45, 15 U.S.C. §1127.

 

The proposed mark is also 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 have similarly designed search boxes.  See the attachments with the previous Office action.

 

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).

 

Here, applicant seeks to register the proposed mark for “computer software for searching for data from global computer networks, individual computers and an online encyclopedia.”  The specimen of record does not show use of the mark thereon or affixed thereto.  Neither does specimen show the proposed mark as a source identifier for a particular good.

 

In its response, applicant argued:

 

The mark claimed in the present applicant is a distinctive graphical design used in and to advertise and promote Applicant’s popular MSN Search software and services.

 

Applicant also provided the following attachments supporting its argument that the proposed mark functions as a trademark for the identified goods:

 

1. “As a display on Applicant’s website where its services are offered.”
2. “In online advertisements for Applicant’s services.”
3. “In television advertisement for Applicant’s software and services.”  [Applicant in its response provided “a DVD disk containing the complete advertisement.”  This disk contains the title “SEED IP” for “5/25/2006” but does not show use of the mark anywhere thereon.]
4. “The online encyclopedia Wikipedia includes an image of Applicant’s mark in its article on Applicant’s MSN Search software and services.”  [The attachment shows use of the mark as part of an “Image: MSN Search.jpg.”]

 

The examining attorney has reviewed these attachments and has determined that they do not demonstrate that applicant’s mark, as shown on the specimen of record, functions as a distinctive source identifier of the identified goods.

 

As discussed above, the specimen of record does not show use of the mark on or affixed to the identified goods.  Despite applicant’s assertion that it has provided “a screenshot showing use of Applicant’s mark on its computer software” (emphasis added), the specimen does not show such use.  Nor does the specimen show valid trademark use of the proposed mark as a source identifier for the identified goods.  Also, advertising material generally are not acceptable specimens for goods.  In re Bright of America, Inc., 205 USPQ 63 (TTAB 1979); TMEP §§904.05 and 904.07.  See In re Ultraflight Inc., 221 USPQ 903 (TTAB 1984). 

 

Applicant also argued that the printouts of search boxes included in the previous Office action only show that “[n]one uses Applicant’s mark.”  The examining attorney included these particular printouts not to show if any search engine uses applicant’s mark, but that numerous search engines have similarly designed search boxes that function as a command indicator for searching information online.  Applicant’s argument does not overcome the fact that the proposed mark fails to function as a source identifier on or affixed to the identified goods.

 

Applicant must submit a substitute specimen showing use of the mark for the goods specified in the application, because the specimen currently of record does not show use of the mark for any goods identified in the application.  37 C.F.R. §2.56; TMEP §§904 and 904.01 et seq.. 

 

Accordingly, applicant must submit a specimen showing the mark as it is used in commerce.  37 C.F.R. § 2.56.  Examples of acceptable specimens are tags, labels, containers, and photographs that show the mark on the goods or packaging.  TMEP §§904.04 et seq. 

 

Applicant must also submit a statement that “the substitute specimen was in use in commerce at least as early as the filing date of the application,” verified with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §§2.56 and 2.59(a); TMEP §904.09.

 

If an amendment of the dates-of-use clause is necessary in order to state the correct dates of first use, the applicant must verify the amendment with an affidavit or a declaration in accordance with 37 C.F.R. §2.20.  37 C.F.R. §2.71(c); TMEP §903.05.

 

Pending an adequate response to the above, the refusal under Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051, 1052 and 1127 is maintained and made FINAL, because the record does not show use of the proposed mark as a trademark.

           

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 informality.

 

Color Description

In the previous Office, applicant was required to provide a description of where the colors appear in the mark.  37 C.F.R. §2.52(b)(1); TMEP §807.07(a)(i). 

 

In its response, applicant did not address this issue.  The requirement for a color description that correctly describes the locations of the colors that appear on the proposed mark is therefore maintained and made FINAL.

 

The following description is suggested: 

 

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.

 

Common color names should be used to describe the colors in the mark, e.g., red, yellow, blue.  TMEP §807.07(a)(ii).

 

Response to Final Refusal

If applicant fails to respond to this final action within six months of the mailing date, the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond to this final action by: 

 

(1)   submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); and/or

(2)   filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).

 

In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2).  37 C.F.R. §2.64(a).  See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matter.  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

If 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.

 

 

 

 

/Dawn Han/

Trademark Examining Attorney

Law Office 107

(571) 272-9432

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• 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.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

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.