Offc Action Outgoing

[Important Email Information]

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  76/662101

 

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.  However, applicant should note the following refusals.

 

Refusal - Section 2(e)(1) - Descriptiveness

 

The examining attorney refuses registration on the Principal Register because the proposed mark merely describes the goods.  Trademark Act Section 2(e)(1), 15 U.S.C. Section 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.  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 §1209.03.

 

The examining attorney must consider whether a mark is merely descriptive in relation to the identified goods, not in the abstract.  In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978); In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985).

 

It is not necessary that a term describe all of the purposes, functions, characteristics or features of the goods to be merely descriptive.  It is enough if the term describes one attribute of the goods.  In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973).

 

The applicant's proposed mark is NIMS INCIDENT COMMAND SYSTEM FIELD GUIDE for printed field guides concerning emergency medical care, nursing care, fire and rescue, law enforcement, homeland security and emergency preparedness, printed pocket charts and printed wall charts.  As used therewith, the proposed mark immediately imparts information about an important feature, function or purpose of the identified goods.  Specifically, the proposed mark merely describes the subject matter of the guide.[1]

 

Consequently, the examining attorney refuses registration on the Principal Register because the proposed mark merely describes the goods.  Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1); TMEP §1209 et seq.  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.

 

The applicant should also note the following additional ground for refusal.

 

Title of Publication

 

Registration is refused because the proposed mark, as used on the specimen of record, is the title of a guide, and thus fails to function as a trademark for such goods.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. §1051, 1052 and 1127; In re Cooper, 254 F.2d 611, 117 USPQ 396 (C.C.P.A. 1958), cert. denied, 358 U.S. 840, 119 USPQ 501 (1958); In re Hal Leonard Publishing Corp., 15 USPQ2d 1574 (TTAB 1990); In re Scholastic Inc., 223 USPQ 431 (TTAB 1984); TMEP §1202.08.

 

Applicant is advised that the name of a series of creative works may be registrable if the designation serves to identify and distinguish the source of the goods.  In re Scholastic Inc., 23 USPQ2d 1774 (TTAB 1992).  Therefore, if applicant uses the mark to identify a series, rather than a single work, then applicant should provide such evidence for the record so this refusal can be withdrawn.  Evidence of a series includes copies of multiple book covers or packaging for prerecorded works that show the mark as a source-identifier for the series as well as show the mark as distinguishable from the individual titles of the works.

 

If applicant responds to the above refusal, then applicant must address the following issues.

 

Information Required

                       

Applicant must provide written answers to the following questions: 

 

1. Does the guide identified in the identification of goods discuss the National Incident Management System? 
2. Does the guide identified in the identification of goods discuss an incident command system?

 

37 C.F.R. §2.61(b).  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).

 

Significance of Wording

 

Applicant must specify whether the acronym “NIMS” has any significance in the trade or industry or as applied to the goods described in the application.  37 C.F.R. §2.61(b).  Applicant must explain the significance.

 

 

 

 

 

 

 

 

Christopher L. Buongiorno

/Christopher L. Buongiorno/

Law Office 102

(571) 272-9251

 

 

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.

 

 

Note:

 

In order to avoid size limitation constraints on large e-mail messages, this Office Action has been split into 2 smaller e-mail messages.  The Office Action in its entirety consists of this message as well as the following attachments that you will receive in separate messages:

 

Email 1 includes the following 6 attachments  

1. nims-1  

2. nims-2  

3. nims2-1  

4. nims2-2  

5. nims2-3  

6. nims3-1  

 

Email 2 includes the following 4 attachments  

1. nims3-2  

2. nims4  

3. nims5-1  

4. nims5-2  

 

Please ensure that you receive all of the aforementioned attachments, and if you do not, please contact the assigned-examining attorney.