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  76/652074

 

No Similar Marks

 

The examining 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. §1052(d).  TMEP §704.02.

 

Failure to Function

 

Registration is refused because the proposed mark, as used on the specimen of record, merely identifies a process, and would not be perceived as a service mark for the services identified in the application.  Trademark Act Sections 1, 2, 3 and 45, 15 U.S.C. §§1051, 1052, 1053 and 1127.  See In re Universal Oil Products Co., 476 F.2d 653, 177 USPQ 456 (C.C.P.A. 1973); In re Walker Research, Inc., 228 USPQ 691 (TTAB 1986); In re Hughes Aircraft Co., 222 USPQ 263 (TTAB 1984); TMEP §1301.02(e).

 

In this case, the specimens comprise a web page excerpt and what appears to be an advertisement for the process.  The specimens indicate use solely to identify a process because they state: “AcriShield TM A process that improves resistance to cracking and crazing when exposed to alcohol based solvents” and “Contact us for more information on our new Seamlite (tm) and Acrisheild (tm) te[chnologies].”  Although the web excerpt specimen is incomplete because it does not show the entire web page, it appears from the applicant’s web site that the truncated word on the right side of the web page is “technologies.”  See the attached complete web excerpt from the applicant’s web site.

 

Where a term is used solely to identify a process or the like, it is not registrable as a service mark.  A process or system is only a way of doing something, and does not generally constitute a service.  The name of a system or process does not function as a service mark unless it is also used to identify and distinguish the services listed in the application, and to indicate the source of those services.  The determination of whether matter functions solely as the name of a system or process and also as a service mark is based on a consideration of the manner in which the proposed mark is used, as evidenced by the specimen and any other information of record.  In re Hughes Aircraft Co., 222 USPQ 263 (TTAB 1984).

 

Applicant may respond to this refusal by submitting a substitute specimen showing proper use of the proposed mark as a service mark (to indicate the source of the services), along with a statement that “the substitute specimen was in use in commerce at least as early as the application filing date,” 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.

 

Drawing

 

The drawing showing the mark in black and white is unacceptable because the application claims color and fails to show the applied-for mark in color.  37 C.F.R. §2.52(b)(1).  All applications for marks claiming color must include a drawing showing the mark in color.  Applicant must therefore submit a new drawing that complies with one of the following:

 

(1)   (a) shows the mark in color, with (b) a statement that “the colors yellow, red, and blue are claimed as a feature of the mark,” and (c) a separate description specifying where the colors appears in the mark, i.e., “ACRI is yellow, SHIELD is red, and the dot over each the letter I is blue”;

 

(2)   (a) shows the mark in black and white in the particular font; and (b) a statement authorizing deletion of the color description.  In the present case, color is not material to the commercial impression of the mark and therefore can be deleted from the drawing of the mark.  37 C.F.R. §2.72; TMEP §§807.07(d) and 807.14 et seq.

 

Specimens

 

The mark as depicted on the drawing does not agree with the mark as it appears on the specimens, and clarification is required.  37 C.F.R. §2.51; TMEP §807.12.  The applicant states that “the mark is presented in a particular font….”  However, the drawing displays the mark in one font, while the specimen depicts the mark in a different font.

 

Applicant must either:

 

(1)   submit a new drawing of the mark that agrees with the mark as it appears on the specimen and that is not a material alteration of the original mark; 37 C.F.R. §2.72(a); TMEP §§807.14 et seq;

 

(2)   submit a substitute specimen that shows use of the mark as it presently appears on the drawing and is accompanied by 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) and 2.72(a); TMEP §904.09; or

 

(3)   amend the application basis to intent-to-use under Section 1(b), and satisfy all the requirements for this new basis.  TMEP §806.03(c).

 

 

Pending an adequate response to the above, registration is refused because the specimens of record do not show use of the proposed mark as a service mark.  Trademark Act Sections 1, 2, 3 and 45, 15 U.S.C. §§1051, 1052, 1053 and 1127; TMEP §§904.11 and 1301.02 et seq.

 

Telephone Calls

 

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

 

 

/Robert H. Coggins/

Attorney-Advisor

Law Office 115

robert.coggins@uspto.gov

571-272-9467

 

 

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.