UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

FINAL PRIORITY 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  76/653371

 

The following confirms the telephone conversation between the trademark examining attorney and Marcia Auberger on January 12, 2007.  The trademark examining attorney has reviewed the applicant's response filed on December 7, 2006.  As discussed, the following requirements are maintained and made FINAL.  37 C.F.R. §2.64.  If the applicant amends the application to comply with the requirements listed below within two months of the above mailing date, the trademark examining attorney will give priority handling to the amended application.  The six-month deadline for filing a response specified above, or, in the alternative, for filing an appeal to the Trademark Trial and Appeal Board, remains in effect.  37 C.F.R. §2.64(a).

 

Final Disclaimer Refusal

The requirement that the applicant disclaim the descriptive wording “SWIVEL SWEEPER” apart from the mark as shown is hereby made final. Trademark Act Section 6, 15 U.S.C. Section 1056; TMEP §§ 1213 and 1213.03(a).  The applicant has disclaimed the term “SWEEPER.”  However, the applicant argues that the term “SWIVEL” is not descriptive of the applicant’s goods.  The examining attorney disagrees.  The term “SWIVEL” is merely descriptive because it defines the applicant’s goods.  The examining attorney has made of record evidence which shows that the term “SWIVEL” means “a link, pivot, or another fastening so designed that it permits the free turning of attached parts.”  Furthermore, the examining attorney has made of evidence, an advertisement for the applicant’s “SWIVEL SWEEPER” on the Internet which states that the “Head Swivels 360°.”  Finally, the specimen of use provided by the applicant is an order form which states the applicant’s product utilizes “a 360° swivel feature to easily maneuver around furniture and other objects.”   

 

Please note, a term 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/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).

 

Consumers viewing the applicant’s mark will properly conclude that the applicant’s goods are swivel head sweepers.  The applicant is reminded that a mark is merely descriptive under Trademark Act Section 2(e)(1), 15 U.S.C. 1052(e)(1), if it describes a quality, or characteristic of its goods.

 

The computerized printing format for the Trademark Official Gazette requires a standard form for a disclaimer.   TMEP §§ 1213 and 1213.08(a)(i).  A properly worded disclaimer should read as follows:

 

            No claim is made to the exclusive right to use “SWIVEL SWEEPER” apart from the mark as shown.

 

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

 

Final Refusal Filing Basis

When the applicant filed the application, it did not claim a filing basis.  The applicant’s response included a Section 1(a) use basis claim.  However, the applicant did not provide the Office with an acceptable specimen of use.  The original Office action stated that the applicant must amend the application to specify at least one filing basis, and that the applicant must also satisfy all the requirements for the basis. 

 

A requirement of a section 1(a) use in commerce basis is that the applicant provide the Office with an acceptable specimen of use.  The applicant’s specimen of use is unacceptable because it is a brochure/order form.  The specimen is unacceptable as evidence of actual trademark use because it is an order form.  Invoices, announcements, order forms, bills of lading, leaflets, brochures, publicity releases and other printed advertising material generally are not acceptable specimens.  In re Bright of America, Inc., 205 USPQ 63 (TTAB 1979); TMEP §§904.05 and 904.07.  See In re Ultraflight Inc., 221 USPQ 903 (TTAB 1984).

 

Accordingly, the 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 §904.09.

 

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.

 

Final Refusal Procedure

If the applicant fails to respond to this final action within six months of the mailing date, the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  The applicant may respond to this final action by: 

 

(1)   submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); and/or

(2)   filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).

 

In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2).  37 C.F.R. §2.64(a).  See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matter.  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

 

 

 

 

 

 

 

/Geoffrey Fosdick/

Geoffrey Fosdick

Trademark Attorney

Trademark Office 111

(571) 272-9161

 

 

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.