UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/661199
APPLICANT: Yi, Bruce Chintaek
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: ONEDAY
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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 76/661199
The assigned trademark examining attorney has reviewed the referenced application and has determined the following:
Search Results
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 merely describes applicant’s 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 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).
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 the mark ONEDAY for “messenger services, namely, pick-up and delivery of mails, packages.”
Here, the mark ONEDAY is merely descriptive of the time frame applicant delivers mail and packages. Please refer to the attached evidence from Dictionary.com, labeled Exhibits 1 and 2, which defines the term “ONE” as “being or amounting to a single unit or individual or entire thing, item, or object rather than two or more.” Additionally, the term “DAY” is defined as “the 24-hour period during which the earth completes one rotation on its axis.” This evidence confirms the descriptive significance of the applied for mark in relation to applicant’s services. The examining attorney also attaches a third party registration for the mark “FEDEX 1DAY” where the term “1DAY” is disclaimed. This evidence supports the descriptive nature of the mark in relation to delivery services. Applicant should also note the use of the term on the FEDEX website to denote delivery service that is completed in a single day. See Exhibit 3. Applicant’s services will feature delivery of packages in a single 24-hour period; therefore, the mark ONEDAY is merely descriptive of its services.
Accordingly, registration is denied on the Principal Register.
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.
Applicant should note the following additional ground for refusal.
The Examining Attorney refuses registration because the proposed mark does not function as a service mark. Trademark Act Sections 1, 2, 3 and 45, 15 U.S.C. §§1051, 1052 1053 and 1127. The proposed mark neither identifies and distinguishes the services of the applicant from those of others nor indicates their source. In Re Remington Products Inc., 3 USPQ2d 1714 (TTAB 1987). TMEP §§1202 et seq. Please note that the proposed mark does not function as a service mark because the specimen submitted with the application is unacceptable as evidence of actual service mark use; therefore, the proposed mark cannot identify and distinguish the applicant's services from those of others nor indicate their source.
Applicant applied to register the mark ONEDAY for “messenger services, namely, pick-up and delivery of mails, packages.”
The current specimen of record comprises what appears to be an advertisement for the services. This specimen is unacceptable as evidence of actual service mark use because it does not support the identification of services. Specifically, there is no association with the package delivery services listed. This is because the specimen does not show the mark attached or used in conjunction with this type of service. The examining attorney cannot draw any association between the services applied for and the specimen because of the foreign wording in the specimen. Applicant must submit a specimen that more clearly associates the mark with its package delivery services. If the specimen contains foreign wording, the applicant must provide a translation of the specimen signed by the translator.
The specimen of record, along with any other relevant evidence submitted with the application, is reviewed and analyzed in order to determine whether a term is being properly used as a service mark. In re Volvo Cars of North America, 46 USPQ2d 1455 (TTAB 1998); In re Morganroth, 208 USPQ 284 (TTAB 1980). Not all words, designs, symbols or slogans used in the sale or advertising of services function as marks, even though they may have been adopted with the intent to do so. A designation cannot be registered unless ordinary purchasers would be likely to regard it as an indicator of origin for the services identified in the application. In re Moody’s Investors Service Inc., 13 USPQ2d 2043 (TTAB 1989); TMEP §§1301.02 et seq.
Examples of acceptable specimens for services are signs, photographs, brochures, website printouts or advertisements that show the mark used in the sale or advertising of the services. TMEP §§1301.04 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 an affidavit or a signed declaration in accordance with 37 C.F.R. §2.20. 37 C.F.R. §2.71(c).
The trademark examining attorney will reconsider this refusal if applicant submits both (1) a substitute specimen showing use as a service mark, and (2) a written 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.
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.
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(Signature)
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(Print or Type Name and Position)
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(Date)
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.
Applicant may also overcome the refusal to register this mark by amending the application to assert a different basis for filing the application and submitting the requirements for the new basis. TMEP §§806.03 et seq.
In this case, applicant may wish to amend the application to assert a 1(b) basis.
Where an application is based on a bona fide intention to use the mark in commerce, applicant must submit the following statement:
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.
This statement must be verified with a notarized affidavit or a signed declaration under 37 C.F.R. §§2.20 and 2.33. Trademark Act Section 1(b), 15 U.S.C. §1051(b); 37 C.F.R. §2.34(a)(2); TMEP §806.01(b).
If applicant chooses to respond to the refusal(s) to register, then applicant must also respond to the following requirement(s).
Applicant must submit an English translation of all non-English wording on the specimen. 37 C.F.R. §2.61(b); TMEP §904.10.
The mark as depicted on the drawing does not agree with the mark as it appears on the specimen, and clarification is required. 37 C.F.R. §2.51; TMEP §§807.12 and 807.12(a). In the present case, the drawing displays the mark as ONEDAY, and the specimen shows the mark as ONEDAY QUICK. Applicant may not submit an amended drawing to conform to the display on the specimen because the character of the mark would be materially altered, i.e., the mark on the specimens creates a different commercial impression from the mark on the drawing. 37 C.F.R. §2.72(a); TMEP §§807.12, 807.12(a), 807.14 et seq and 904.09.
Therefore, applicant must do one of the following:
(1) submit a substitute specimen showing use of the mark as it appears on the drawing, with 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
(2) amend the basis to Section 1(b) and satisfy all the requirements for this new basis. TMEP §806.03(c).
No set form is required for response to this Office action. The applicant must respond to each point raised. The applicant should simply set forth the required changes or statements and request that the Office enter them. The applicant must sign the response. Please note that all electronic communications must be signed using the "/name/" format. TMEP section 804.05.
Applicants may now respond formally using the Office’s Trademark Electronic Application System (TEAS) at <http://www.gov.uspto.report/teas/index.html>. When using TEAS the data the applicant submits is directly uploaded into the Office’s database, which reduces the time it takes to process the applicant’s response, while also eliminating the possibility of data entry errors by the Office. Applicants are strongly encouraged to use TEAS to respond to office actions.
TEAS PLUS APPLICANTS MUST SUBMIT DOCUMENTS ELECTRONICALLY OR SUBMIT FEE: TEAS Plus applicants should submit the following documents using the Trademark Electronic Application System (TEAS) at <http://www.gov.uspto.report/teas/index.html>: (1) responses to Office actions; (2) preliminary amendments; (3) changes of correspondence address; (4) changes of owner’s address; (5) appointments and revocations of attorney; (6) amendments to allege use; (7) statements of use; (8) requests for extension of time to file a statement of use, and (9) requests to delete a §1(b) basis. If any of these documents are filed on paper, they must be accompanied by a $50 per class fee. 37 C.F.R. §§2.6(a)(1)(iv) and 2.23(a)(i). NOTE: In addition to the above, applicant must also continue to accept correspondence from the Office via e-mail throughout the examination process in order to avoid the additional fee. 37 C.F.R. §2.23(a)(2).
PLEASE NOTE: Because it delays processing, submission of duplicate papers is discouraged. Unless specifically requested to do so by the Office, parties should not mail follow up copies of documents transmitted electronically or by fax. TMEP 306.04; Cf. ITC Entertainment Group Ltd. V. Nintendo of America Inc. 45 USPQ2d 2021 (TTAB 1998).
/Benjamin U. Okeke/
United States Patent & Trademark Office
600 Dulany St., Alexandria VA 22314
Law Office 112
571.270.1524
571.270.2524 (Fax)
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.