Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

Serial Number  76/639678

 

OFFICE ACTION

 

 

This letter responds to applicant’s communication received on June 21, 2006.

 

The refusal to register on the ground of likelihood of confusion with Registration No. 2959343 is withdrawn.

 

AMENDMENT OF FILING BASIS

 

Applicant has requested that the filing basis be amended from §1(a) (use in commerce) to §1(b) (intent to use).  However, applicant did not submit the statement required with a §1(b) application.

 

To base the application on a bona fide intention to use the mark in commerce, the applicant must submit the following statement:

 

The applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods listed in the application as of the filing date of the application.

 

This statement must be verified with a notarized affidavit or a signed declaration under 37 C.F.R. §§2.20 and 2.33.  Trademark Act §1(b), 15 U.S.C. §1051(b); 37 C.F.R. §2.34(a)(2); TMEP §806.01(b).

 

REFUSAL TO REGISTER ON GROUND OF MERE DESCRIPTIVENESS CONTINUED

 

Applicant argues that its goods are not “smart” because they are not automated and require human intervention after fiber-optic sensors are disturbed and send a signal to the mainframe, at which time an alarm is tripped.  This is a distinction without a difference.  While applicant’s goods may not have built-in microprocessors, the sensors contained in them communicate with electronic devices and send an alarm to persons monitoring the system.  The fact that the sensors within the blanket can detect unauthorized access to the space covered by the security blanket, triggering an alarm, renders the blanket “smart.”  See attached dictionary definition from Infoplease, in which one of the definitions is “containing electronic control devices.”

 

Applicant also asserts that the mark as a whole is not merely descriptive.  It is true that a mark that combines descriptive terms may be registrable if the composite creates a unitary mark with a separate, nondescriptive meaning.  However, if each component retains its descriptive significance in relation to the goods or services, the combination results in a composite that is itself descriptive.  In re Tower Tech, Inc., 64 USPQ2d 1314 (TTAB 2002) (“SMARTTOWER” merely descriptive of “commercial and industrial cooling towers and accessories therefor, sold as a unit”); In re Sun Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001) (“AGENTBEANS” merely descriptive of computer software for use in development and deployment of application programs on global computer network); In re Putman Publishing Co., 39 USPQ2d 2021 (TTAB 1996) (“FOOD & BEVERAGE ONLINE” merely descriptive of news and information service for the food processing industry); In re Copytele Inc., 31 USPQ2d 1540 (TTAB 1994) (“SCREEN FAX PHONE” merely descriptive of “facsimile terminals employing electrophoretic displays”); In re Entenmann’s Inc., 15 USPQ2d 1750 (TTAB 1990), aff’d per curiam, 928 F.2d 411 (Fed. Cir. 1991) (“OATNUT” merely descriptive of bread containing oats and hazelnuts).

 

Applicant’s mark is similar to “SMARTTOWER” with respect to its components.  “Blanket” is generic, and “Smart” is merely descriptive, as discussed above.  Thus, “Smartblanket” does not create a separate, nondescriptive meaning.  “Smart” merely modifies “blanket.”

 

For the foregoing reasons, therefore, the refusal to register on the ground of mere descriptiveness is continued.  Trademark Act §2(e)(1).

 

AMENDMENT TO SUPPLEMENTAL REGISTER

 

A mark in an application under Trademark Act § 1(b) is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use under 37 C.F.R. §2.76 or statement of use under 37 C.F.R. §2.88 has been filed.  37 C.F.R. §§2.47(d) and 2.75(b); TMEP §1102.03.  When a §1(b) application is amended to the Supplemental Register, the effective filing date of the application is the date of filing of the allegation of use.  37 C.F.R. §2.75(b); TMEP §§206.01 and 1102.03.

 

DECLARATION

 

Following is a properly worded declaration under 37 C.F.R. §2.20.  At the end of the response, the applicant should insert the declaration signed by someone authorized to sign under 37 C.F.R. §2.33(a).

 

The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. 1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that the facts set forth in this application are true; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.

_____________________________

                (Signature)

_____________________________

(Print or Type Name and Position)

_____________________________

                  (Date)

 

 

 

/Sue Carruthers/

Trademark Attorney, Law Office 108

Phone:  571-272-9139

Fax:  571-273-9108 (formal responses only)

 

 

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.