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  76/645934

 

 

               The assigned examining attorney has reviewed the referenced application and determined the following.

SEARCH OF THE OFFICE RECORDS

 

            The trademark 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. Section 1052(d).  TMEP section 1105.01.

 

 

 

 

REGISTRATION REFUSED – MERELY DISCRIPTIVE

 

             Registration is refused because the proposed mark merely describes the field of the applicant’s consultation services.  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 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 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 term need not describe all of the purposes, functions, characteristics or features of the  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 applicant applied to register the mark PARISH DATA SYSTEM for CONSULTATION IN THE FIELD OF COMPUTER SOFTWARE FOR CHURCH, SCHOOL, AND NON-PROFIT ORGANIZATION INFORMATION, ADMINISTRATION, AND FINANCIAL MANAGEMENT, in Class 42. As used by the applicant, the term PARISH refers to the users of the applicant’s services and the wording DATA SYSTEM is highly descriptive of a function of the computer software. A mark which combines descriptive terms may be registrable only if the composite creates a unitary mark with a separate, nondescriptive meaning.  In re Ampco Foods, Inc., 227 USPQ 331 (TTAB 1985).  The applicant’s mark does not create a separate, nondescriptive meaning. To the contrary, PARISH DATA SYSTEM is merely descriptive since patrons would immediately know what services were offered by the applicant and the market, to which it is directed, namely, consultation in the field of data systems for parish’s.  Put another way, it is merely descriptive of the very purpose of the field or subject matter of the services. Accordingly, the mark is not registrable on the Principal Register.

 

RIGHT TO RESPOND

 

             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.

SUPPLEMENTAL REGISTER

 

            Although the examining attorney has refused registration on the Principal Register, the applicant may amend the application to seek registration on the Supplemental Register.  Trademark Act Section 23, 15 U.S.C. Section 1091; 37 C.F.R. Sections 2.47 and 2.75(a); TMEP sections 202.02(b) and 1115.

 

INFORMALITIES

 

            If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informal issues.

 

INFORMATION REQUIREMENT

             In order to allow for proper examination of the application, including the final determination as to whether the mark is merely descriptive in relation to the services, the applicant must submit samples of advertisements or promotional materials for the services or, if unavailable, for services of the same type.  If such materials are not available, the applicant must describe the nature, purpose and channels of trade of the services identified in the application.  In addition, the applicant must state whether the mark has any meaning in relation to the services.  37 C.F.R. §2.61(b); TMEP §§1103.04 and 1105.02.

 

              Trademark Rule 2.61(b) states "The examiner may require the applicant to furnish such information and exhibits as may be reasonably necessary to the proper examination of the application".  The Trademark Trial and Appeal Board has upheld a refusal of registration based on the applicant's failure to provide information requested under this rule.  In re Babies Beat Inc., 13 USPQ2d 1729 (TTAB 1990)(failure to submit patent information regarding configuration). 

DISCLAIMER

 

             The applicant must disclaim the descriptive wording “DATA SYSTEM” apart from the mark as shown. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a).  The wording is highly descriptive of the field of the applicant’s consultation services.

 

            The computerized printing format for the Trademark Official Gazette requires a standard form for a disclaimer.   TMEP §1213.08(a)(i).  A properly worded disclaimer should read as follows:

 

No claim is made to the exclusive right to use DATA SYSTEM apart from the mark as shown.

 

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

CLOSING

 

              If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

 

 

/William H. Dawe III/

Trademark Attorney

Law Office 108

(571) 272-9337 voice

(571) 273-9337 fax

 

 

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.

 

par·ish

 
par·ish (pàr¹îsh) noun

Abbr. par.

1.    a. An administrative part of a diocese that has its own church in the Anglican, Roman Catholic, and some other churches. b. The members of such a parish; a religious community attending one church.

2.    A political subdivision of a British county, usually corresponding in boundaries to an original ecclesiastical parish.

3.    An administrative subdivision in Louisiana that corresponds to a county in other U.S. states.

 [Middle English, from Old French parroche, from Late Latin parochia, diocese, alteration of paroecia, from Late Greek paroikia, from Greek, a sojourning, from paroikos, neighboring, neighbor, sojourner : para-, near. See para-1 + oikos, house.][1]

 

da·ta

 
da·ta (dâ¹te, dàt¹e, dä¹te) plural noun (used with a sing. or pl. verb)

1.    Factual information, especially information organized for analysis or used to reason or make decisions.

2.    Computer Science. Numerical or other information represented in a form suitable for processing by computer.

3.    Values derived from scientific experiments.

4.    Plural of datum.

 

plural noun, attributive

Often used to modify another noun: data communications; data updates.

 [Latin, pl. of datum. See datum.]

 Usage Note: Data originated as the plural of Latin datum, “something given,” and many maintain that it must still be treated as a plural form. The New York Times, for example, adheres to the traditional rule in this headline: “Data Are Elusive on the Homeless.” But while data comes from a Latin plural form, the practice of treating data as a plural in English often does not correspond to its meaning, given an understanding of what counts as data in modern research. We know, for example, what “data on the homeless” would consist of—surveys, case histories, statistical analyses, and so forth—but it would be a vain exercise to try to sort all of these out into sets of individual facts, each of them a “datum” on the homeless. (Does a case history count as a single datum, or as a collection of them? Is a correlation between rates of homelessness and unemployment itself a datum, or is it an abstraction over a number of data?) Since scientists and researchers think of data as a singular mass entity like information, it is entirely natural that they should have come to talk about it as such and that others should defer to their practice. Sixty percent of the Usage Panel accepts the use of data with a singular verb and pronoun in the sentence Once the data is in, we can begin to analyze it. A still larger number, 77 percent, accepts the sentence We have very little data on the efficacy of such programs, where the singularity of data is implicit in the use of the quantifier very little (contrast the oddness of We have very little facts on the efficacy of such programs).[2]

 

sys·tem

 
sys·tem (sîs¹tem) noun

Abbr. syst.

1.    A group of interacting, interrelated, or interdependent elements forming a complex whole.

2.    A functionally related group of elements, especially:. a. The human body regarded as a functional physiological unit. b. An organism as a whole, especially with regard to its vital processes or functions. c. A group of physiologically or anatomically complementary organs or parts: the nervous system; the skeletal system. d. A group of interacting mechanical or electrical components. e. A network of structures and channels, as for communication, travel, or distribution.

3.    An organized set of interrelated ideas or principles.

4.    A social, economic, or political organizational form.

5.    A naturally occurring group of objects or phenomena: the solar system.

6.    A set of objects or phenomena grouped together for classification or analysis.

7.    A condition of harmonious, orderly interaction.

8.    An organized and coordinated method; a procedure. See synonyms at method.

9.    The prevailing social order; the establishment. Used with the: You can't beat the system.

 [Late Latin systêma, systêmat-, from Greek sustêma, from sunistanai, to combine : sun-, syn- + histanai, set up, establish.][3]