Offc Action Outgoing

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.

 

This letter responds to applicant’s communication filed on November 15, 2007 in which applicant provides arguments against the 2(e)(1) descriptiveness refusal.

 

The trademark examining attorney has considered applicant’s arguments carefully and found them unpersuasive for the reason(s) below.

 

The refusal under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1), is now made FINAL for the reasons set forth below.  37 C.F.R. §2.64(a).

 

2(e)(1) Descriptiveness Refusal

As previously stated, a mark is merely descriptive under Section 2(e)(1) if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified 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). A mark that describes an intended user of a product or service is also merely descriptive within the meaning of Section 2(e)(1). See Hunter Publ’g Co. v. Caulfield Publ’g, Ltd., 1 USPQ2d 1996 (TTAB 1986); In re Camel Mfg. Co., 222 USPQ 1031 (TTAB 1984).

A mark that combines descriptive terms may be registrable if the composite creates a unitary mark with a separate, nondescriptive 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 nondescriptive 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.

Further, the fact that an applicant may be the first and sole user of a merely descriptive or generic designation does not justify registration where the evidence shows that the term is merely descriptive of the identified goods and/or services. In re Acuson, 225 USPQ 790 (TTAB 1985) (COMPUTED SONOGRAPHY descriptive of ultrasonic imaging instruments); In re National Shooting Sports Foundation, Inc., 219 USPQ 1018 (TTAB 1983) (SHOOTING, HUNTING, OUTDOOR TRADE SHOW AND CONFERENCE held apt descriptive name for conducting and arranging trade shows in the hunting, shooting and outdoor sports products field); TMEP §1209.03(c).

In the present case, applicant seeks registration of the mark SUPER SET for “Bedding and accessories, namely, comforters, quilts, bed sheets, sheet sets, duvets, duvet covers, quilts, bed linens, bed spreads, bed skirts, bed shams, dust ruffles, bed blankets, bed pads, throws, pillow cases, pillow covers, decorative pillow covers, pillow shams, mattress pads, mattress covers, bed canopies; bedding for infants, namely, comforters, crib bumpers, crib sheets, crib dust ruffles, crib blankets, receiving blankets; mattress covers, mattress pads, bed sheets, or bed linens made of waterproof fabric for the purpose of inhibiting or preventing fluid transfer between bedding layers.”  Super is defined as “an article of a superior quality, grade, size, etc.” Set is defined as “a collection, each member of which is adapted for a special use in a particular operation.”

Applicant argues that its mark is suggestive and not descriptive of its goods.  Further, applicant argues that super set does not describe a descriptive characteristic of “a specified good.”  The Examining attorney disagrees.  Applicant’s mark is merely laudatory of its goods.  Laudatory terms, i.e., those terms that attribute quality or excellence to goods or services, are considered descriptive terms under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §1209.03(k). That is, laudatory terms, phrases and slogans are nondistinctive and unregistrable on the Principal Register without proof of acquired distinctiveness. In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001) (THE ULTIMATE BIKE RACK); In re Boston Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999) (THE BEST BEER IN AMERICA); In re Dos Padres Inc., 49 USPQ2d 1860 (TTAB 1998) (QUESO QUESADILLA SUPREME); In re Consolidated Cigar Co., 35 USPQ2d 1290 (TTAB 1995) (SUPER BUY); General Foods Corp. v. Ralston Purina Co., 220 USPQ 990 (TTAB 1984) (ORIGINAL BLEND).

The mark is descriptive because it immediately conveys that applicant’s goods are an ensemble of superior quality or price. The term super set is a part of the lexicon of the marketplace for bedding and bedding accessories.  In addition to the previously attached evidence, please see the additional evidence which illustrates descriptive use of the wording in relation bedding. See Evidence 1-4. 

In addition, applicant provides a list of one thousand four hundred and forty-seven (1447) records, which contain the word “set.”  Applicant specifically identifies several marks, namely, U.S. Trademark Registration No. 3,262,336 for TURBOSET, U.S. Trademark Registration No. 3,209,366 for AUTOSET, U.S. Trademark Registration No. 3,164,281 for HEATSET, U.S. Trademark Registration No. 3,145,697 for TOP-SET, U.S. Trademark Registration No. 3,136,610 for SMARTSET, U.S. Trademark Registration No. 3,086,674 for JINSTA-SET, U.S. Trademark Registration No. 3,054,998 for SURESET and U.S. Trademark Registration No. 2,693,416 for DOUBLESET. Unfortunately, the aforementioned marks are not laudatory in nature.  In addition, third-party registrations are not conclusive on the question of descriptiveness.  Each case must be considered on its own merits.  A proposed mark that is merely descriptive does not become registrable simply because other similar marks appear on the register.  In re Scholastic Testing Service, Inc., 196 USPQ 517 (TTAB 1977); TMEP §1209.03(a).

 

Accordingly, the refusal to register is maintained pursuant to Section 2(e)(1) of the Trademark Act for descriptiveness.

 

Proper Response to Final Action

 If applicant fails to respond to this final action within six months of the mailing date, the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond to this final action by: 

 

(1)   submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); and/or

 

(2)   filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).

 

In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2).  37 C.F.R. §2.64(a).  See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matters.  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

 

 

 

/Bernice Middleton/

Bernice Middleton

Trademark Examining Attorney

Law Office 106

Bernice.Middleton@uspto.gov

(571) 270-1514

Fax No: (571) 27

 

 

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.