To: | GT&S, Inc. (wblumer@LHAPlaw.com) |
Subject: | TRADEMARK APPLICATION NO. 76641777 - AUTOBLEND - 39149.048 |
Sent: | 1/30/06 5:47:02 PM |
Sent As: | ECOM112@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 |
UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/641777
APPLICANT: GT&S, Inc.
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CORRESPONDENT ADDRESS: LEISAWITZ HELLER ABRAMOWITCH PHILLIPS SUITE 400, 2201 RIDGEWOOD ROAD |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: AUTOBLEND
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CORRESPONDENT’S REFERENCE/DOCKET NO: 39149.048
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 76/641777
The assigned trademark examining attorney has reviewed the referenced application and has determined the following.
The Office records have been searched and no similar registered or pending mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.
2(e)(1) – MERELY DESCRIPTIVE REFUSAL
Registration is refused because the proposed mark is merely descriptive of the identified goods. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §§1209.01(c) 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).
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).
The two major reasons for not protecting descriptive marks are: (1) to prevent the owner of a mark from inhibiting competition in the sale of particular goods or services; and (2) to avoid the possibility of costly infringement suits brought by the registrant. This thus enables businesses and competitors to have the freedom to use common descriptive language when merely describing their own goods or services to the public in advertising and marketing materials. In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (C.C.P.A. 1978); In re Colonial Stores, Inc., 394 F.2d 549, 157 USPQ 382, 383 (C.C.P.A. 1968); Armour & Co. v. Organon Inc., 245 F.2d 495, 114 USPQ 334, 337 (C.C.P.A. 1957); In re Styleclick.com Inc., 57 USPQ2d 1445, 1448 (TTAB 2000).
The applicant has applied to register AUTOBLEND in International Class 001 for “gases and gas mixtures used in calibration of auto emission testing equipment.”
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 held to be 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 held to be merely descriptive of bread containing oats and hazelnuts).
Here, each component of the mark, AUTOBLEND, retains its descriptive significance in relation to applicant’s goods. The combination results in a composite that is itself descriptive and does not create a unique, non-descriptive meaning or commercial impression. The mark AUTOBLEND merely describes and immediately names a feature and purpose and/or use of applicant’s goods. Specifically, applicant’s mixture or blends of gases are used for the calibration of emissions testing equipment for automobiles. Please refer to the attached on-line dictionary evidence, which confirms the descriptive significance of the applied for mark in the context of applicant’s goods.
Accordingly, registration is denied on the Principal Register.
Although the trademark examining attorney has refused registration on the Principal Register, applicant may respond to the stated refusal under Section 2(e)(1) by amending the application to seek registration on the Supplemental Register. Trademark Act Section 23, 15 U.S.C. §1091; 37 C.F.R. §§2.47 and 2.75(a); TMEP §§801.02(b), 815 and 816 et seq.
Although Supplemental Register registration does not afford all the benefits of registration on the Principal Register, it does provide the following advantages:
Although the trademark examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
If applicant chooses to respond to the refusal(s) to register, then applicant must also respond to the following requirement(s).
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. 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. §2.59(a); TMEP §904.09.
The current specimen of record comprise a scanned photograph from applicant’s webpage and is unacceptable as evidence of actual trademark use because it does not show use in commerce of the mark, AUTOBLEND, on or in connection with applicant’s goods, namely, gases. While website printouts are acceptable specimens for services, they are generally not acceptable specimens for goods. 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.
If an amendment of the dates‑of‑use clause is necessary in order to state the correct dates of first use, then applicant must verify the amendment with a notarized affidavit or a signed declaration in accordance with 37 C.F.R. §2.20. 37 C.F.R. §2.71(c).
If applicant cannot comply with the specimen requirement for the 1(a) use of the mark in commerce basis asserted, then applicant may substitute a different basis for filing if applicant can meet the requirements for the new basis. See TMEP §§806.03 et seq.
In this case, applicant may wish to amend the application to assert a 1(b) bona fide intention to use the mark in commerce basis. Applicant must submit the following statement in order to satisfy the application requirements for asserting a basis for registration under Section 1(b) of the Trademark Act:
Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the filing date of the application.
Trademark Act Section 1(b), 15 U.S.C. § 1051(b). This statement must be verified with an affidavit or a signed declaration under 37 C.F.R, §2.20. Trademark Act Section 1(b), 15 U.S.C. §1051(b); 37 C.F.R. §2.34(a)(2); TMEP §§806.01(b) and 804.02.
The following is a sample declaration under 37 C.F.R. §2.20 with a supporting statement for a substitute specimen:
The undersigned being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements and the like may jeopardize the validity of the application or document or any registration resulting there from, declares that the substitute specimen was in use in commerce at least as early as the filing date of the application; 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)
/Mariam Aziz Mahmoudi/
Trademark Examining Attorney
United States Patent & Trademark Office
Law Office 112
Tel. (571) 272-9733
Fax (571) 273-9733
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.