UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/639720
APPLICANT: Woven Electronics Corporation
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: SMARTGRATE
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CORRESPONDENT’S REFERENCE/DOCKET NO: 032893.00074
CORRESPONDENT EMAIL ADDRESS: |
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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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 76/639720
This is in response to applicant’s correspondence of November 17, 2006 regarding the trademark application identified above.
In office action number 2, the examining attorney:
(1) Refused registration under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1),
(2) Advised applicant that it could amend the application to seek registration on the Supplemental Register,
(3) Required applicant to provide an acceptable substitute specimen, and
(4) Advised applicant of a conditional refusal pending receipt of the acceptable specimen, under Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051, 1052 and 1127; TMEP §§904.11 and 1202 et seq.
In its response to office action number 2, the applicant:
(1) Provided no arguments against the refusal under Trademark Act Section 2(e)(1), but
(2) Amended it application to seek registration on the Supplemental Register. However, applicant’s amendment also included an attempt to amend the use dates for the trademark to dates after the filing date. This makes the amendment to the Supplemental Register improper. Accordingly, this amendment is refused and the refusal to register under Trademark Act Section 2(e)(1) is continued. However, because the amendment to the Supplemental Register raises a new issue, this refusal cannot be made final.
(3) Attempted to provide a substitute specimen together with an amendment to the dates of use of the mark to a date after the application date. Unfortunately, applicant did not follow the proper procedure and its amendment and allegation were not effective. Accordingly, the requirement for a new specimen and the refusal to register for failure to show use of the mark are also continued. Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051, 1052 and 1127; TMEP §§904.11 and 1202 et seq.
In its response, applicant requested the Office to effectuate the desired outcome, which applicant indicated it could not do via the online filing system. Unfortunately, the Office cannot make the necessary statements for applicant and cannot sign the necessary declarations required to complete the procedure required to change the dates of use as required for this application. These are actions that can only be taken by applicant.
Applicant should be able to correct all of the above by following the proper steps with the online response forms. The examining attorney has outlined the proper steps for applicant below under the heading “Possible Procedure for Response.”
Applicant must respond to the following before the response deadline.
Registration is refused because the proposed mark merely describes the nature of 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). A mark that describes an intended user of a product or service is also merely descriptive within the meaning of Section 2(e)(1). Hunter Publishing Co. v. Caulfield Publishing Ltd., 1 USPQ2d 1996 (TTAB 1986); In re Camel Mfg. Co., Inc., 222 USPQ 1031 (TTAB 1984); In re Gentex Corp., 151 USPQ 435 (TTAB 1966).
A term need not describe all of the purposes, functions, characteristics or features of the goods and/or services to be merely descriptive. For the purpose of a Section 2(e)(1) analysis, it is sufficient that the term describe only one attribute of the goods and/or services to be found merely descriptive. In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973); TMEP §1209.01(b).
The determination of whether a mark is merely descriptive is considered in relation to the identified goods and/or services, 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 mark that combines descriptive terms is generally not registrable unless the composite creates a unitary mark with a unique, non-descriptive meaning or commercial impression. 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 held merely descriptive of “computer software for use in the development and deployment of application programs on a global computer network”); In re Shiva Corp., 48 USPQ2d 1957 (TTAB 1998) (TARIFF MANAGEMENT held merely descriptive for “computer hardware and computer programs to control, reduce and render more efficient wide area network (WAN) usage and printed user manuals sold therewith”); In re Putnam Publishing Co., 39 USPQ2d 2021 (TTAB 1996) (FOOD & BEVERAGE ON-LINE merely descriptive of “a news and information service updated daily for the food processing industry, contained in a database”); In re Copytele, Inc., 31 USPQ2d 1540 (TTAB 1994) (SCREEN FAX PHONE merely descriptive of “facsimile terminals employing electrophoretic displays”); In re Digital Research Inc., 4 USPQ2d 1242 (TTAB 1987) (CONCURRENT DOS and CONCURRENT PC-DOS held merely descriptive of “computer programs recorded on disk”).
The term “smart” has been held merely descriptive of automated devices. See In re Cryomedical Sciences Inc., 32 USPQ2d 1377, 1378 (TTAB 1994) (SMARTPROBE merely descriptive of disposable cryosurgical probes); See also 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”).
The applicant’s goods may not themselves contain microprocessors and may not have computational abilities and may require human triggering. However, the contention that these goods are not automated is clearly contradicted by the applicant’s own discussion of the goods in its response to office action 1, on March 31, 2006. Additionally, while the applicant’s goods may not themselves contain microprocessors, they connect to and communicate with a computer system that would certainly have processors (micro or otherwise). Therefore, the possibility of the applicant’s goods not themselves containing microprocessors is of no great consequence.
The evidence provided with office action number 2 shows that while the applicant may be the first to adopt the specific wording SMARTGRATE for this specific product, it is not the first to use the word “smart” to describe a security system that utilizes fiber optics or other electronic means with computers and barriers to create a combination barrier with an alarm function. The fact that an applicant may be the first user of a merely descriptive or generic designation does not justify registration where the evidence shows that the term is merely descriptive of the identified goods and/or services. In re Acuson, 225 USPQ 790 (TTAB 1985) (COMPUTED SONOGRAPHY descriptive of ultrasonic imaging instruments); In re National Shooting Sports Foundation, Inc., 219 USPQ 1018 (TTAB 1983) (SHOOTING, HUNTING, OUTDOOR TRADE SHOW AND CONFERENCE held apt descriptive name for conducting and arranging trade shows in the hunting, shooting and outdoor sports products field); TMEP §1209.03(c).
In context, a “smart grate” would have more capabilities than earlier grates. Those earlier grates would be barriers alone. The “smart grate” might open remotely, might automatically shut and lock after a predetermined time, or might, as is the case here, communicate to a computer when intrusion has occurred or is imminent.
The examining attorney asserts that all of the foregoing shows that the element SMART is descriptive of security barriers that are connected to computers for the purpose of identifying and monitoring breaches of the barriers. With regard to the remaining element, the word GRATE, the examining attorney notes that the identification of goods provided by the applicant use the following wording to describe the goods:
A security grate, namely a grid of metal tubing, and fiber optic sensor line enclosed within the tubing.
Because the applicant itself identifies the goods as “a security grate” the examining attorney may reasonably conclude that this wording is generic for the goods. Therefore, the examining attorney has shown the descriptiveness of the individual elements of the mark, and that together they are also merely descriptive. Because the goods are automated and connected to computers, the wording SMART is descriptive. Because its goods are grates, the word GRATE is also descriptive. Together, the wording SMARTGRATE acts as a noun, “grate” modified by the adjective, “smart” which together make a descriptive word SMARTGRATE.
For the foregoing reasons, the evidence from earlier office actions shows that as applied to the goods, the wording SMARTGRATE is merely descriptive. This refusal is therefore continued.
Applicant must submit (1) a substitute specimen showing the mark as it is used in commerce on the goods or on packaging for the goods, and (2) 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 §§904.01 et seq. and 904.09.
The current specimen of record would be acceptable but for the fact that applicant did not provide (2) a statement that “the substitute specimen was in use in commerce at least as early as the filing date of the application.” The applicant declared that the specimen “was in use in commerce prior to the filing of the Amendment to Allege Use (AAU).” However, if applicant looks at the prosecution history of the application, it will see that it has never filed AAU. Accordingly, the specimen’s first use declaration is without the necessary supporting allegations.
In the event that applicant wishes to submit a different substitute specimen, applicant should note that examples of acceptable specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the goods or packaging, or displays associated with the goods at their point of sale. TMEP §§904.04 et seq.
*Applicant is encouraged to submit its substitute specimen online. If it does, the online response form should launch the proper declaration to sign with the response, when applicant elects “yes” in response to item “Do you want to submit a Signed Declaration?” If the applicant provides a paper response to this office action, the following declaration should be submitted with the substitute specimen:
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Declaration
If the applicant is seeking registration under Section 1(b) and/or Section 44 of the Trademark Act, the applicant had a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. 37 C.F.R. Secs. 2.34(a)(2)(i); 2.34 (a)(3)(i); and 2.34(a)(4)(ii). If the applicant is seeking registration under Section 1(a) of the Trademark Act, the mark was in use in commerce on or in connection with the goods or services listed in the application as of the application filing date. 37 C.F.R. Secs. 2.34(a)(1)(i). 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 he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. §1051(b), he/she believes applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; that if the original application was submitted unsigned, that all statements in the original application and this submission made of the declaration signer's knowledge are true; and all statements in the original application and this submission made on information and belief are believed to be true.
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(Signature)
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(Print or Type Name and Position)
_____________________________
(Date)
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Pending an adequate response to the above, registration is refused because the specimen of record does not show use of the proposed mark as a trademark. Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051, 1052 and 1127; TMEP §§904.11 and 1202 et seq.
This refusal will be withdrawn if applicant submits (1) a substitute specimen showing proper trademark use of the proposed mark on or in connection with the identified goods, and (2) a statement that “the substitute specimen was in use in commerce at least as early as the filing date of the application,” verified with an affidavit or a signed declaration under 37 C.F.R. §2.20. 37 C.F.R.§2.59(a); TMEP §904.09.
If applicant does not have an acceptable substitute specimen, applicant may overcome the refusal to register this mark by amending the application to assert a different basis for filing the application and submitting the requirements for the new basis. TMEP §§806.03 et seq.
In this case, applicant may wish to amend the application to assert a 1(b), Intent to Use basis.
If applicant wishes to submit a substitute specimen that was used after the filing date of the application, and wishes to amend the first use dates to reflect that fact, this will require 2 steps:
(1) Applicant must first amend the application basis from use under Section 1(a) to Intent to use under Section 1(b). This requires the signature on a declaration regarding applicant’s intent to use the mark as of the filing date,
(2) Applicant must then file an Amendment to Allege Use, providing a specimen, the necessary fee, declaration signature and all other requirements normally required in an Amendment to Allege Use. At this time, the application will be in the proper procedural position for an amendment to the Supplemental Register, if applicant wishes to make that amendment.
Applicant is encouraged to file its responses online. If applicant has questions or needs assistance navigating the online filing system, it should contact the examining attorney by telephone, providing sufficient time before the response deadline for a call to be returned if necessary.
Please note, there is no required format or form for responding to this Office action. The Office recommends applicants use the Trademark Electronic Application System (TEAS) to respond to Office actions online at <http://www.gov.uspto.report/teas/index.html>. However, if applicant responds on paper via regular mail, the response should include the following information: (1) the name and law office number of the examining attorney; (2) the serial number of this application; (3) the mailing date of this Office action; and, (4) applicant's telephone number.
When responding to this Office action, applicant must make sure to respond to each refusal and requirement raised. If there is a refusal to register the proposed mark, then applicant may wish to argue against the refusal, i.e., submit arguments and/or evidence as to why the refusal should be withdrawn and why the mark should register. If there are other requirements, then applicant should simply set forth in writing the required changes or statements and request that the Office enter them into the application record. Applicant must also sign and date its response.
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.
/Fred Carl III/
Trademark Examining Attorney
Law Office 108
571-272-8867 voice
571-273-9108 fax for official communications only
HOW TO RESPOND TO THIS OFFICE ACTION:
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.