UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/664895
MARK: TALK ON WATER
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CORRESPONDENT ADDRESS: |
RESPOND TO THIS ACTION: http://www.gov.uspto.report/teas/eTEASpageD.htm
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/main/trademarks.htm
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APPLICANT: OCEAN POWER TECHNOLOGIES, INC.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.
The Office has reassigned this application to the undersigned trademark examining attorney.
This letter responds to applicant’s communication filed on September 6, 2007.
The following requirements have been satisfied and are now withdrawn: (1) Clarification of Entity Type; and (2) Clarification of Drawing Format. TMEP §714.04. Upon further review of the Identification of Services, the following issue arose. The examining attorney apologizes for any inconvenience this may cause.
PLEASE NOTE: Applicant is encouraged to telephone the trademark examining attorney to resolve the issues raised below.
Applicant must disclaim the descriptive wording “Water” apart from the mark as shown because it merely describes the applicant’s services. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a).
The applicant’s services are identified as being performed over “bodies of water.” See application; See attached definition from the American Heritage Dictionary. Therefore, the term “Water” in the proposed mark, TALK ON WATER, describes where the applicant’s s services occur. As a result, the term “water” is descriptive of a feature or characteristic of the applicant’s services and must be disclaimed.
The determination of whether a term is descriptive is considered in relation to the identified goods and/or services, not in the abstract. In re Abcor Dev. Corp., 588 F.2d 811, 814, 200 USPQ 215, 218 (CCPA 1978); see, e.g., In re Polo Int’l Inc., 51 USPQ2d 1061 (TTAB 1999) (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” where relevant trade uses the denomination “concurrent” as a descriptor of this particular type of operating system); see TMEP §1209.01(b).
A term need not describe all of the purposes, functions, characteristics or features of the goods and/or services to be descriptive. In re Dial-a-Mattress Operating Corp., 240 F.3d 1341, 1346, 57 U.S.P.Q.2d 1807 (Fed. Cir. 2001). It is enough if the term describes only one significant function, attribute or property. In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004) (“[A] mark may be merely descriptive even if it does not describe the ‘full scope and extent’ of the applicant’s goods or services.”) (quoting In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1346, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001)).
The computerized printing format for the Office’s Trademark Official Gazette requires a standardized format for a disclaimer. TMEP §1213.08(a)(i). The following is the standard format used by the Office:
No claim is made to the exclusive right to use “Water” apart from the mark as shown.
See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).
The wording in the identification of services is indefinite and must be clarified because it is unclear if the applicant is a wireless communication provider or if the applicant is providing signals to water buoys to aid in water navigation. TMEP §1402.01. Applicant may substitute the following wording, if accurate:
Class 38
Electronic data transmission through the use of electronic equipment located on and within buoys distributed in bodies of water for receiving and transmitting electrical signals
--and/or--
Providing cellular telephone services through the use of electronic equipment located on and within buoys distributed in bodies of water for receiving and transmitting electrical signals
--and/or--
Telecommunication services, namely, transmission of electronic data in the field of sea navigation through the use of electronic equipment located on and within buoys distributed in bodies of water for receiving and transmitting electrical signals
Please note that, while the identification of services may be amended to clarify or limit the services, adding to the services or broadening the scope of the services is not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, applicant may not amend the identification to include services that are not within the scope of the services set forth in the present identification.
For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.
To expedite prosecution of this application, applicant is encouraged to file its response to this Office action through the Trademark Electronic Application System (TEAS), available at http://www.gov.uspto.report/teas/index.html.
If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.
/Alyssa L. Paladino/
Trademark Examining Attorney
Law Office 107
Phone: (571) 272-8808
Fax: (571) 273-9107
RESPOND TO THIS ACTION: If there are any questions about the Office action, please contact the assigned examining attorney. A response to this Office action should be filed using the form available at http://www.gov.uspto.report/teas/eTEASpageD.htm. If notification of this Office action was received via e-mail, no response using this form may be filed for 72 hours after receipt of the notification. Do not attempt to respond by e-mail as the USPTO does not accept e-mailed responses.
If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response. Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.
STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov. When conducting an online status check, print and maintain a copy of the complete TARR screen. If the status of your application has not changed for more than six months, please contact the assigned examining attorney.