UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/659847
APPLICANT: KWIECIENSKI, RICHARD E.
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: ULTRALITE
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
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 76/659847
THIS IS A FINAL ACTION
This letter responds to the applicant's communication filed on February 27, 2007. The amendment to the identification of goods and the withdrawal of the claim of prior registration are acceptable. The refusal to register the mark under Section 2(d) is hereby WITHDRAWN.
Applicant seeks registration of the mark ULTRALITE for use in connection with “lightweight golf club carrying frames.” Registration is refused because the proposed mark merely describes the quality and the weight of the applicant’s goods. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §§1209 et seq.
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 applicant concedes that the mark identifies the lightest in weight of its line of 4 different light weight golf club carriers and states further that compared to its other carriers, the Ultralite is “truly ultra light in weight.” Overall the applicant has affirmed that the composite mark ULTRALITE describes the extreme, light weight of applicant’s golf club carrying frames. As stated in the dictionary definitions attached in the prior office action, the term ULTRA is a laudatory term meaning “extreme” or “beyond due limit.” The term LITE tells consumers that the goods are not heavy. Even though the applicant has telescoped the terms ULTRA and LITE into a composite, ULTRALITE still tells consumers that the goods are extremely “lightweight” as described by the applicant.
Moreover, the mark ULTRA LITE, which is registered for hockey sticks, disclaimed ULTRA and LITE because the terms are descriptive of the quality and the nature of the weight of the hockey sticks. For the same reasons, the examining attorney hereby finds that the applicant’s mark ULTRALITE assigns a quality to the golf club carrying frames, beyond the limits of what is considered lightweight and tells consumers that the goods are very lightweight or ULTRALITE to which the applicant claims is the logical name for its goods.
Therefore the examining attorney finds that the mark is descriptive and refuses registration under the Trademark Act §2(e)(1), 15 U.S.C. 1052(e)(1).
Applicant must submit a new drawing showing the entire mark clearly and conforming to 37 C.F.R. §§2.52, 2.53(c) and 2.54(e). The current drawing is written by hand and does not show a standard character mark which the applicant claims.
Because of the degree of stylization of the font used to depict the mark on the drawing page, applicant must clarify whether a standard character drawing format or a special-form drawing format was intended. TMEP §§807.03 et seq. and 807.04 et seq. If a standard character drawing was intended, then applicant must submit the following statement: “The mark consists of standard characters without claim to any particular font, style, size, or color.” 37 C.F.R. §2.52(a). If a special-form drawing was intended, then applicant must state so for the record. 37 C.F.R. §2.52(b).
In a standard character drawing, the mark on the drawing consists of only words, letters or numbers, but does not include any designs or claims as to particular font, style, size, or color. A registration for a mark using a standard character drawing affords protection not only for the standard character version of the mark, but for any possible renderings of the mark, as long as those renderings do not contain any design elements; i.e., a registered standard character drawing of the mark gives protection for display on the specimens in any lettering style. A special-form drawing, on the other hand, shows the mark in stylized letters and/or with a design element and provides protection for only that specific rendering. 37 C.F.R. §2.52; TMEP §§807.03 et seq. 807.04 et seq.
All refusals and requirements are FINAL.
If 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). 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 matters. The petition fee is $100. 37 C.F.R. §2.6(a)(15).
/D. Beryl Gardner/
Examining Attorney
Law Office 112
571-272-9162 (office)
571-273-9162 (fax)
beryl.gardner@uspto.gov
NOTICE OF NEW PROCEDURE FOR E-MAILED OFFICE ACTIONS: In late spring 2007, for any applicant who authorizes e-mail communication with the USPTO, the USPTO will no longer directly e-mail the actual Office action to the applicant. Instead, upon issuance of an Office action, the USPTO will e-mail the applicant a notice with a link/web address to access the Office action using Trademark Document Retrieval (TDR), which is located on the USPTO website at http://portal.gov.uspto.report/external/portal/tow. The Office action will not be attached to the e-mail notice. Upon receipt of the notice, the applicant can then view and print the actual Office action and any evidentiary attachments using the provided link/web address. TDR is available 24 hours a day, seven days a week, including holidays and weekends. This new process is intended to eliminate problems associated with e-mailed Office actions that contain numerous attachments.
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.