UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.

 

ISSUE/MAILING DATE:

 

THIS IS A FINAL ACTION.

 

The following replies to applicant’s response dated August 31, 2007. 

 

REQUIREMENTS SATISFIED

 

The following requirements have been satisfied and are now withdrawn pursuant to TMEP §714.04: 1) standard character requirement; 2) specimen requirement (the original specimen now designated as a label is acceptable); 3) declaration requirement. TMEP §1402.01(e).

 

The following requirement is continued: 1) requirement for the significance of the mark. 

 

In addition, registration is now refused as follows.

Refusal – Mark Descriptive of Goods

 

Registration is refused because the proposed mark, EFORCE, is merely descriptive of applicant’s goods, namely, pumps.  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). 

 

Here, applicant’s mark describes the quality and characteristics of electronic force pumps.  Applicant’s goods include vacuum prime pumps and flood suction pumps.  Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a). 

 

The letter “e”, when used as a prefix, has become commonly recognized as a designation for goods or services that are electronic in nature or are sold or provided electronically. In re Styleclick.com Inc., 57 USPQ2d 1445 (TTAB 2000) (E FASHION held merely descriptive of software for use in shopping via global computer network and electronic retailing services); Continental Airlines Inc. v. United Air Lines Inc., 53 USPQ2d 1385 (TTAB 1999) (E-TICKET held generic for computerized reservation and ticketing of transportation services). 

 

The word, “force,” in this context, appears to refer to a type of pump known as a “force pump.”  See the attached Internet and article evidence, as well as the dictionary definitions from Encarta World English Dictionary, Merriam-Webster Dictionary, Biology-Online Dictionary, and The American Heritage Dictionary.  Based on these definitions, the letter “e” and the word “force” appear to describe applicant’s goods, namely, electronic force pumps.

 

Descriptiveness of Combined Wording

 

A mark that combines descriptive terms may be registrable if the composite creates a unitary mark with a separate, non-descriptive meaning.  In re Colonial Stores, Inc., 394 F.2d 549, 157 USPQ 382 (C.C.P.A. 1968) (holding SUGAR & SPICE not to be merely descriptive of bakery products).  However, the mere combination of descriptive words does not automatically create a new non-descriptive word or phrase.  E.g., In re Associated Theatre Clubs Co., 9 USPQ2d 1660, 1662 (TTAB 1988) (finding GROUP SALES BOX OFFICE descriptive for theater ticket sales services).  The registrability of a mark created by combining only descriptive words depends on whether a new and different commercial impression is created, and/or the mark so created imparts an incongruous meaning as used in connection with the goods and/or services.  Where, as in the present case, the combination of the descriptive words creates no incongruity, and no imagination is required to understand the nature of the goods and/or services, the mark is merely descriptive.  E.g., In re Copytele Inc., 31 USPQ2d 1540, 1542 (TTAB 1994); Associated Theatre Clubs, 9 USPQ2d at 1662. 

 

As is apparent from applicant’s specimen, here, applicant’s mark contains a letter and a word that do not lose their descriptive meaning when combined.  Therefore, the mark, EFORCE, is descriptive of force pumps and registration is refused in accordance with the Trademark Act. 

 

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.

 

 

Supplemental Register

 

Applicant may alternatively respond to the stated refusal under 1(a) by amending the application to seek registration on the Supplemental Register.  Trademark Act Section 23, 15 U.S.C. §1091; 37 C.F.R. §§2.47 and 2.75(a); TMEP §§801.02(b), 815 and 816 et seq.

 

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

Requirement For Additional Information

 

Applicant must indicate whether its pumps:

1)     are electronic;

2)     include force pumps;

3)     are referred to in Applicant’s industry as force pumps or electronic force pumps;

4)     possess the characteristics of force pumps.

 

This information is necessary to evaluate accurately and fully the registrability of the applicant’s proposed designation. 37 C.F.R. Section 2.61(b); TMEP sections 1103.04 and 1105.02.  If the applicant does not provide the information required herein, registration may be refused.  The Trademark Rules of Practice have the effect of law and failure to comply with a request for information is grounds for refusal of registration.  See, e.g., In re Joseph Edward Page, 1999 TTAB LEXIS 229 (TTAB 1999); In re Babies Beat, Inc., 13 USPQ2d 1729 (TTAB 1990); In re Big Daddy's Lounges, Inc., 200 USPQ 371 (TTAB 1978); In re Air Products and Chemicals, Inc., 192 USPQ2d 84, 85-86 (TTAB 1976); and In re Morrison Industries, Inc., 178 USPQ 432, 433-34 (TTAB 1973).   

Response Guidelines

 

When responding to this Office action, applicant should include the following information on all correspondence with the Office:  (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.

 

Applicant must respond in writing to each refusal and requirement raised.  Applicant should set forth in writing the required changes or statements and request that the Office enter them into the application record.  Applicant must also sign and date its response.

 

Applicant may contact the examining attorney at the number below with any questions about its application or this Office action.

 

 

/Edward Fennessy/

Edward Fennessy

Trademark Examining Attorney

Law Office 114

1.571.272.8804

 

 

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.