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  76/663867

 

The assigned examining attorney has reviewed the referenced application and determined the following.

 

No Conflicting Marks Noted

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.

 

Mark Is Merely Descriptive

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 section 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 section 1209.01(b).  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 has applied to register the mark “DIALOG” for “wireless and wired phones and software for use in audio conferencing”.

 

The term “DIALOG” is defined as:

di·a·log

 
di·a·log (dì¹e-lôg´, -lòg´) noun & verb

Variant of dialogue.[1]

 

di·a·logue

 
di·a·logue or  di·a·log (dì¹e-lôg´, -lòg´) noun

Abbr. dial.

1.    A conversation between two or more people.

2.    a. Conversation between characters in a drama or narrative. b. The lines or passages in a script that are intended to be spoken.

3.    A literary work written in the form of a conversation: the dialogues of Plato.

4.    Music. A composition or passage for two or more parts, suggestive of conversational interplay.

5.    An exchange of ideas or opinions: achieving constructive dialogue with all political elements.

 

verb

di·a·logued or  di·a·loged di·a·logu·ing or  di·a·log·ing di·a·logues or  di·a·logs verb, transitive

To express as or in a dialogue.

 

verb, intransitive

1.    To converse in a dialogue.

2.    Usage Problem. To engage in an informal exchange of views.

 [Middle English dialog, from Old French dialogue, from Latin dialogus, from Greek dialogos, conversation, from dialegesthai, to discuss. See dialect.]

— di¹a·log´uer noun

 Usage Note: In recent years the verb sense of dialogue meaning “to engage in an informal exchange of views” has been revived, particularly with reference to communication between parties in institutional or political contexts. Although Shakespeare, Coleridge, and Carlyle used it, this usage today is widely regarded as jargon or bureaucratese. For example, 98 percent of the Usage Panel rejects the sentence Critics have charged that the department was remiss in not trying to dialogue with representatives of the community before hiring the new officers.[2]

 

Terms that describe the function or purpose of a product or service may be merely descriptive or generic under 15 U.S.C. §1051(e)(1).  In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987) (SCREENWIPE held generic for an anti-static cloth used for cleaning computer and television screens); In re Central Sprinkler Co., 49 USPQ2d 1194 (TTAB 1998) (ATTIC generic for sprinklers installed primarily in attics); In re Reckitt & Colman, North America Inc., 18 USPQ2d 1389 (TTAB 1991) (PERMA PRESS generic for soil and stain removers for use on permanent press products); In re Wallyball, Inc., 222 USPQ 87 (TTAB 1984) (WALLYBALL held descriptive of sports clothing and game equipment); In re National Presto Industries, Inc., 197 USPQ 188 (TTAB 1977) (BURGER held merely descriptive of cooking utensils); In re Orleans Wines, Ltd., 196 USPQ 516 (TTAB 1977) (BREADSPRED held merely descriptive of jams and jellies).

 

The applicant's mark merely describes the function or purpose of the goods, namely, wireless and wired phones and software for use in conversations via audio conferencing.  Consequently, the mark is unregistrable on the Principal Register.

 

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.

 

Supplemental Register

Please note that the mark in an application under Trademark Act Section 1(b), 15 U.S.C. Section 1051(b), is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use under 37 C.F.R. Section 2.76 or statement of use under 37 C.F.R. Section 2.88 has been timely filed.  37 C.F.R. Section 2.47(c); TMEP section 1105.01(a)(vii). When such an application is changed from the Principal Register to the Supplemental Register, the effective filing date of the application is the date of filing of the allegation of use.  37 C.F.R. Section 2.75(b); TMEP section 708.01.

 

If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following issue.

 

Standard Drawing Claim

Applicant must submit the following standard character claim:  “The mark consists of standard characters without claim to any particular font, style, size, or color.”  37 C.F.R. §2.52(a); TMEP §807.03(a).

 

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

 

 

 

 

/Alec Powers/

Trademark Examining Attorney

US Patent and Trademark Office

Law Office 101

Phone: 571-272-9309

Fax: 571-273-9101

 

 

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.