UNITED STATES PATENT AND TRADEMARK OFFICE
|
SERIAL NO: 76/667276
APPLICANT: Reid, John
|
|
|
CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
|
|
MARK: WELL MANAGER
|
|
|
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.
|
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 76/667276
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.
The drawing of the mark must include only the mark that is sought to register. Since the TM designation is not part of the mark, it must be deleted from the drawing. TMEP §§807.04 and 807.15. The applicant may simply delete the TM symbol and resubmit a new drawing. The Office strictly enforces these drawing requirements.
To submit a special form drawing electronically, applicant must attach a digitized image of the mark to the submission. The digitized image must be in .jpg format, formatted at no less than 300 dots per inch and no more than 350 dots per inch. The Office recommends that the digitized image of the mark have a length and width of no smaller than 250 pixels and no larger than 944 pixels. 37 C.F.R. §2.53(c); TMEP §807.05(c). All lines in the image must be clean, sharp and solid, and not fine or crowded, and produce a high quality image when copied.
Drawing Contains Gray
Applicant has submitted a drawing showing the mark in the color gray, along with black and/or white, but has not specified whether gray is meant to be a color in the mark or the mark is intended to be represented in black and white. There are only two options for presenting the mark: (1) color drawings, and (2) black and white drawings. The appearance of gray has created an ambiguity as to whether the mark features color or is intended to be in black and white, and clarification is required. 37 C.F.R. §§2.52(b)-(b)(1); TMEP §807.07(e).
(1) If gray is not considered a color or a feature of the mark, applicant must submit the following statement: “The mark is not in color.”
(2) If gray is considered a color and is a feature of the mark, applicant must submit a color claim and description for all the colors in the mark, including black and white. The following format is suggested: “The colors [specify gray and/or black and/or white] are claimed as a feature of the mark. The color [name of color] appears in the wording [indicate wording, as appropriate] and in the design [identify design element as appropriate].”
The specimen is unacceptable because it does not show use of the mark on the goods in commerce. The applicant submitted a colored drawing showing the mark, which is not acceptable to show use in commerce. Please note that product information and brochures are not acceptable specimens to show use in commerce.
The applicant must submit (1) a specimen (i.e., an example of how applicant actually uses its mark in commerce for the goods listed in the application) showing the mark as it is used in commerce, and, (2) a statement that “the specimen was in use in commerce at least as early as the filing date of the application,” verified with a notarized affidavit or signed declaration under 37 C.F.R. §2.20. 37 C.F.R. §2.59(a); TMEP §904.09.
Examples of acceptable specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the goods or packaging, or displays associated with the goods at their point of sale. Displays associated with the goods essentially comprise point-of-sale material, such as banners, shelf-talkers, window displays, menus and similar devices. TMEP §§904.04, 904.06, et seq.
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 trademark. Trademark Act Sections 1, 3 and 45, 15 U.S.C. §§1051, 1053 and 1127; TMEP §§904.11 and 1301.02 et seq.
The applicant must also verify, with an affidavit or a declaration under 37 C.F.R. Section 2.20, that the substitute specimen was in use in commerce at least as early as the filing date of the application. 37 C.F.R. §2.59(a); TMEP §904.09.
The statement supporting use of the substitute specimen must read as follows:
The substitute specimen was in use in commerce at least as early as the filing date of the application.
The applicant must sign this statement either in affidavit form or with a declaration under 37 C.F.R. Section 2.20. See below for sample declaration.
If applicant cannot comply with the requirement for a new specimen for the Section 1(a) use-basis asserted, then applicant may substitute a different basis for filing if applicant can meet the requirements for the new basis. See TMEP §§806.03 et seq.
In this case, applicant may wish to amend the application to assert a Intent-to-Use basis under Section 1(b). If so, applicant must submit the following statement in order to satisfy the application requirements for asserting a basis for registration under Section 1(b) of the Trademark Act:
“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.”
Trademark Act Section 1(b), 15 U.S.C. §1051(b). This statement must be verified with an affidavit or a signed declaration under 37 C.F.R. §2.20. Trademark Act Section 1(b), 15 U.S.C. §1051(b); 37 C.F.R. §2.34(a)(2); TMEP §§806.01(b) and 804.02.
Sample Declaration
The following is a properly worded declaration under 37 C.F.R. Section 2.20. At the end of the response, the applicant should insert the declaration signed by someone authorized to sign under 37 C.F.R. Section 2.33(a).
The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. 1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that the facts set forth in this application are true; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.
_____________________________
(Signature)
_____________________________
(Print or Type Name and Position)
_____________________________
(Date)
Disclaimer
Applicant must disclaim the descriptive wording “WELL” apart from the mark as shown because it merely describes a function and purpose of the goods. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a).
The Office can require an applicant to disclaim an unregistrable part of a mark consisting of particular wording, symbols, numbers, design elements or combinations thereof. 15 U.S.C. §1056(a). Under Section 2(e) of the Trademark Act, the Office can refuse registration of an entire mark if the entire mark is merely descriptive, deceptively misdescriptive, or primarily geographically descriptive of the goods. 15 U.S.C. §1052(e). Thus, the Office may require an applicant to disclaim a portion of a mark that, when used in connection with the goods or services, is merely descriptive, deceptively misdescriptive, primarily geographically descriptive, or otherwise unregistrable (e.g., generic). TMEP §1213.03(a).
Failure to comply with a disclaimer requirement can result in a refusal to register the entire mark. TMEP §1213.01(b).
A “disclaimer” is a statement that applicant does not claim exclusive rights to an unregistrable component of a mark. A disclaimer does not affect the appearance of the applied-for mark.
In further support of this requirement, the examining attorney attaches third-party registrations obtained from the USPTO X-Search database. The registrations all have disclaimers of the descriptive term, “WELL”, for similar goods and/or services.
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 “WELL” apart from the mark as shown.
See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).
The identification of goods is unacceptable because some of the goods are indefinite and require further clarification. TMEP §1402.11. Applicant must amend the identification of goods to specify the common commercial or generic name for the goods. If there is no common commercial or generic name for the goods, then applicant must describe the goods and intended users. TMEP §1402.01.
Applicant may substitute the following wording, if accurate:
“Electric pumps for {specify use, e.g., water wells}, namely an electrically powered well pump system consisting of water pressurization pumps, non-pressurized water storage tanks, electronic controls for controlling and timing the collection of water, metal or non-metal water pipes, and plumbing fittings, namely valves, all sold as a unit and used for regulating water production and storage,” in International Class 007. TMEP §§1402.01 and 1402.03.
Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, the applicant may not amend to include any goods or services that are not within the scope of the goods and services recited in the present identification.
The applicant is encouraged to consult the PTO’s Acceptable ID Manual, which is available on the Patent and Trademark Office’s home page at http://tess2.gov.uspto.report/netahtml/tidm.html. The Manual includes explanations and notices of classification policy. The Acceptable Identification of Goods and Services Manual sets out acceptable language for identifying goods and services of various types. Utilizing identification language from the Manual may enable trademark owners to avoid problems relating to indefiniteness with respect to the goods or services identified in their applications for registration; however, applicants should note that they must assert actual use in commerce or a bona fide intent to use the mark in commerce for the goods or services specified. TMEP Section 1402.04.
If applicant is the owner of U.S. Registration No(s). 2359407 (see attached), then applicant must submit a claim of ownership. 37 C.F.R. §2.36; TMEP §812. The following standard format is suggested:
Applicant is the owner of U.S. Registration No(s). 2359407.
Response to Office Action
There is no required format or form for responding to this Office action. The Office recommends applicants use the Trademark Electronic Application System (TEAS) to respond to Office actions online at http://www.gov.uspto.report/teas/index.html. However, if applicant responds on paper via regular mail, the response should include the following information: (1) the name and law office number of the examining attorney; (2) the serial number of this application; (3) the mailing date of this Office action; and (4) applicant's telephone number.
/David A. Hoffman/
Examining Attorney
Law Office 107
(Ph) 571-272-8805
(Fx) 571-273-8805
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.