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 responds to the letter received May 14,2008. After careful consideration of the applicant’s arguments for allowance, the following action is issued:

 

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

 

A mark that describes an intended user or group of users of a product or service is merely descriptive.  E.g., In re Planalytics, Inc., 70 USPQ2d 1453 (TTAB 2004) (holding GASBUYER merely descriptive of intended user of risk management services in the field of pricing and purchasing natural gas); In re Camel Mfg. Co., 222 USPQ 1031 (TTAB 1984) (holding MOUNTAIN CAMPER merely descriptive of intended users of retail and mail order services in the field of outdoor equipment and apparel); see TMEP §1209.03(i).

 

The applicant seeks to register the term PROFESSIONAL in stylized lettering for goods identified as , “ magazines featuring articles of interest to professional women in the Midwestern United States”.

 

The applicant argues that this term, by itself, does not clearly inform the readership of the particular group to whom the publications are directed, and that  the term “ professional” is subject to a variety of definitions, not all descriptive in the context of the publication.

 

The determination of whether a mark is merely 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 (C.C.P.A. 1978); TMEP §1209.01(b); see, e.g., In re Polo Int’l Inc., 51 USPQ2d 1061 (TTAB 1999) (finding 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) (finding CONCURRENT PC-DOS merely descriptive of “computer programs recorded on disk” where relevant trade used the denomination “concurrent” as a descriptor of a particular type of operating system).  “Whether consumers could guess what the product is from consideration of the mark alone is not the test.”  In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).

 

Descriptiveness is considered in relation to the relevant goods and/or services.  The fact that a term may have different meanings in other contexts is not controlling on the question of descriptiveness.  In re Chopper Indus., 222 USPQ 258, 259 (TTAB 1984); In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979); TMEP §1209.03(e).

 

The word “professional” is defined as , “ having a particular profession as a permanent career; …characteristic of a profession” ( see enclosed dictionary definitions).

 

The applicant itself, in specifying the identification of its goods, clearly indicates that the magazine’s readership is directed to “professional women”, containing ‘articles of interest” to such individuals.

 

As such , the term PROFESSIONAL clearly and immediately informs the viewer of the particular readership to whom the magazine is directed—women who practice a particular profession as a career. Other third party publications directed to the same type of audience as the applicant’s magazine clearly use the term “professional” in identifying the readership to whom the publication is  directed. The magazine “Women’s Edge”  in its website states that its publication, “ …will be a blueprint to inspire, motivate collaborate and mentor professional women throughout the  Triangle.” “ Our purpose  is to be a voice for and about professional women in our community…”

 

The “Write News” reviews a new national magazine called “ PINK”, a “ new magazine for Professional Women”.   “ Houston Woman magazine” is  “ a monthly publication that targets professional women living and working in the greater Houston Metropolitan area”.  The publication “MOXY”  titles itself a “ the magazine for young professional women”. Such usage clearly identifies a class of publication which would be familiar to the particular reading audience, professional women; applicant’s usage of the term PROFESSIONAL on the same type of publication would also convey the identical descriptive meaning, identifying the particular readership to whom the  publication is directed, as indicated by the applicant in the current identification of goods clause.

 

Moreover, in the publishing industry, it appears that there is a genus or category of magazines known in the trade as “professional women’s” magazines or publications.  The website,  “Subscription –Offers.com” offers subscriptions to three magazines, “SELF”, “Bee” and “Pink” identified as a particular genus of publication, “ professional women magazine subscriptions”. Such a term ( “ professional womens”) appears to be a recognized subcategory of the category known as “women’s magazines” or “women’s publications” ( see such a sublisting category as “professional women”, along with other recognized subcatagories for women’s magazines, such as “ shopping” , “ Spanish” , and “Spiritual and Inspirational” in the above mentioned website for women’s magazine subscriptions).  It would therefore appear that such terminology as “professional” in relation to such types of publications would, in addition to being descriptive in nature, may also be generic, identifying a subcategory of “women’s magazines” in the publishing industry.  Based on the factual situation, this case appears to be analogous to the facts in  The Conde Nast Publications Inc. v. The Redbook Publishing Company,  217 USPQ 356 (TTAB 1983) in which the term  “The Magazine for Young Women” was held to be generic, identifying a category of publication recognized in the publishing industry.

The applied-for mark shows the wording in stylized lettering.  However, the degree of stylization in this case is not sufficiently striking, unique or distinctive so as to create a commercial impression separate and apart from the unregistrable components of the mark.  See In re Sambado & Son Inc., 45 USPQ2d 1312 (TTAB 1997); In re Bonni Keller Collections Ltd., 6 USPQ2d 1224 (TTAB 1987).

 

For these reasons, registration is refused under the provisions of Section 2(e)(1) of the Trademark Act, on grounds that the term  PROFESSIONAL, applied to a magazine directed to topics of interest to professional women in a particular geographic region, merely describes the reading audience to whom the magazines are directed. Moreover, based on the common usage of the term “ professional Womens” to identify a subcatagory of  “women’s magazines”, such a term may be incapable of identifying source of origin of the publication.

 

If applicant does not respond within six months of the mailing date of this final Office action, the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond to this final Office action by: 

 

(1)     Submitting a response that fully satisfies all outstanding requirements, if feasible; 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), 2.64(a); TBMP ch. 1200; TMEP §714.04.

 

In certain rare circumstances, a petition to the Director may be filed pursuant to 37 C.F.R. §2.63(b)(2) to review a final Office action that is limited to procedural issues.  37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

 

 

Henry S. Zak

/Henry S. Zak/

Examining Attorney

Law Office 117

(571) 272-9354

 

 

RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.gov.uspto.report/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail.  For technical assistance with the form, please e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned examining attorney.  Do not respond to this Office action by e-mail; 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.