| To: | Heraeus Kulzer GmbH (ndkramer@mindspring.com) |
| Subject: | U.S. TRADEMARK APPLICATION NO. 76691513 - A:CADEMY EXPERIENCE - Heraeus 1159 |
| Sent: | 4/28/2009 11:15:16 AM |
| Sent As: | ECOM106@USPTO.GOV |
| Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 |
UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/691513
MARK: A:CADEMY EXPERIENCE
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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: Heraeus Kulzer GmbH
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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.
ISSUE/MAILING DATE: 4/28/2009
This communication responds to applicant’s response dated April 1, 2009.
DISCLAIMER MAINTAINED and REPEATED
Applicant was asked to disclaim the descriptive wording “ACADEMY” apart from the mark as shown because the applicant features a dentist academy. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a).
The applicant argues that because the word academy features a colon and some of the letters are presented in lighter and darker font and this overcomes the disclaimer request.
The addition of punctuation marks to a descriptive term would not ordinarily change the term into a non-descriptive one. The presence of minor spelling idiosyncrasies or punctuation marks does not normally change merely descriptive terms into suggestive terms. In re Samuel Moore & Co., 195 USPQ 237, 240 (TTAB 1977) ("Applicant has not cited nor have we found any case where it was held that a common punctuation mark, such as an exclamation point, was sufficient to elevate an otherwise merely descriptive term to the status of a registrable trademark. We do not do so in this case"). See also In re S.D. Fabrics, Inc., 223 USPQ 54, 55 (TTAB 1984) ("Aside there from, we are not persuaded that the design features of applicant's mark, namely, the filling in of portions of some of the letters in the mark and the separation of the two words of the mark with a conventional punctuation mark, are so distinctive as to create a commercial impression separate and apart from the unregistrable components"); In re Wyandotte Chemicals Corp., 156 USPQ 100, 100 (TTAB 1967) (“the addition of hyphens to marks, as in this case, has not been successful in changing the descriptive nature of the term. It is equally true that a descriptive term is not made arbitrary by hyphenating or misspelling it"). See also Weiss Noodle Co., 129 USPQ at 413 (Term "HA-LUSH-KA" held to be the generic equivalent of the Hungarian word "haluska"); American Druggist Syndicate v. United States Industrial Alcohol Co., 2 F.2d 942, 943 (D.C. Cir. 1924) ("'Al-Kol' is merely a phonetic or misspelling of the word 'alcohol,' and is descriptive of the goods"); In re S.D. Fabrics, Inc., 223 USPQ 54, 55 (TTAB 1984) ("Aside therefrom, we are not persuaded that the design features of applicant's mark, namely, the filling in of portions of some of the letters in the mark and the separation of the two words of the mark with a conventional punctuation mark, are so distinctive as to create a commercial impression separate and apart from the unregistrable components").
Enclosed please also find registrations from the office database showing them with colons in them in which the descriptive or generic term with a colon has been disclaimed.
Please also see the attached definition of academy which is:
Definitions of academy on the Web:
Applicant features educational services, namely, providing classes, seminars and workshops in the field of dentistry and training services in the field of dentistry and dental techniques. Applicant features an institution for the advancement of dentistry and therefore the term is generic for the services. Despite the presentation of the term the mark must be disclaimed. A consumer asking for the services will ask for academy as a whole and not “A” “colon” “cad” and “emy” therefore, the term must be disclaimed.
The applicant refers to third party registrations. Actions on prior applications do not dictate the result in later cases. See In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001). Furthermore, as for the third-party registrations, regardless of what these third-party registrations, or the records in the registrations, may show, and even to the extent the marks in these third-party registrations "have some characteristics similar to [applicant's application], the PTO's allowance of such prior registrations… is not binding." In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001). It is well settled that each case must be decided on its own facts, based on the particular mark, the particular goods or services, and the particular record in each application. See Nett Designs Inc., supra; and In re Scholastic Testing Services, Inc., 196 USPQ 517 (TTAB 1977). See also In re First Draft, Inc., 76 USPQ2d 1183, 1188 (TTAB 2005) ("even proof that various examining attorneys have registered a particular type of mark in the past does not establish that there is an Office practice holding such marks are generally registrable.").
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 ACADEMY apart from the mark as shown.
See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).
Failure to comply with a requirement to disclaim has been held to be a basis for refusal to register before the Act of 1946. See In re American Cyanamid & Chemical Corp., 99 F.2d 964, 39 USPQ 445 (C.C.P.A. 1938). Failure to comply with a requirement to disclaim also was held to justify a refusal after the 1946 Act. See In re Hercules Fasteners, Inc., 203 F.2d 753, 97 USPQ 355 (C.C.P.A. 1953); Ex parte Knomark Mfg. Co., Inc., 118 USPQ 182 (PO Ex. Ch. 1958). Even after amendment of the pertinent language of §6 of the 1946 Act to the discretionary wording "may require the applicant to disclaim," registration may be refused if an applicant does not comply with a requirement for disclaimer made by the examining attorney. See In re Richardson Ink Co., 511 F.2d 559, 185 USPQ 46 (C.C.P.A. 1975); In re National Presto Industries, Inc., 197 USPQ 188 (TTAB 1977); In re Pendleton Tool Industries, Inc., 157 USPQ 114 (TTAB 1968).
The disclaimer of the word future is withdrawn.
Recitation of Goods and Services:
Applicant may amend the identification to list only those items that are within the scope of the goods set forth in the application or within the scope of a previously accepted amendment to the identification. See 37 C.F.R. §2.71(a); TMEP §§1402.06 et seq., 1402.07.
Applicant may adopt the following identification, if accurate:
Class 5
Dental materials for the manufacture of tooth substitute and for dental treatment, namely, composite materials for dental and dental technical purposes;
Dental ceramic materials for veneering and for the manufacture or repair of crowns, bridges, dentures, denture composites and inlays;
semi-finished goods, namely, blanks consisting of dental ceramics or alloys of precious metals and non-precious metals, dental materials for making dental impressions for the production of dental substitutes and dental treatment.
Class 10:
Dental instruments, namely, dental syringes used for filling and repairing teeth and for making and repairing crowns, bridges, inlays and dentures;
Dental instruments, namely, dental extruders
Class 40
Dental technician services and dental laboratory services featuring measuring and imaging in the medical and dental-medical field and construction of dental replacement parts, namely, crown caps or bridge structures, preferably of ceramics or metal, on behalf of third parties.
Class 41:
Educational services, namely, providing classes, seminars and workshops in the field of dentistry;
Training services in the field of dentistry and dental techniques.
Class 42:
Scientific and technological services and research work and designer services in the field of dentistry and dental services.
For assistance regarding an acceptable listing of goods and/or services, please see the on-line searchable Manual of Acceptable Identifications of Goods and Services, at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.
Recitation and Identification Amendment Advisory:
Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.
If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those goods and/or services based on a foreign registration under Trademark Act Section 44(e);
Applicant must list the goods and/or services by international class with the classes listed in ascending numerical order. TMEP § 1403.01; and
Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid. 37 C.F.R. §2.86(a)(2); TMEP §§810.01 and 1403.01.
If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those goods and/or services based on a foreign registration under Trademark Act Section 44(e):
Applicant must list the goods and/or services by international class with the classes listed in ascending numerical order. TMEP § 1403.01; and
Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid. 37 C.F.R. §2.86(a)(2); TMEP §§810.01 and 1403.01.
Drawing:
The applicant must submit a new drawing because the drawing submitted features a very light rectangle in the background which is not a part of the mark. The office will not publish the mark with this element in the background unless it is a feature of the mark.
A special form drawing must comply with the following requirements:
(1) Depict the mark in black and white, unless the mark is in color. If color is a feature of the mark, applicant must depict the mark in color, and provide both a statement identifying the colors claimed and a statement describing where the colors appear in the mark. 37 C.F.R. §2.52(b).
(2) Depict the mark using a pen or a process that will provide high definition when copied. A photolithographic, printer’s proof copy, or other high quality reproduction of the mark may be used. All lines must be clean, sharp and solid, and must not be fine or crowded.; and
(3) Depict the mark no larger than 3.15 inches (8 cm) high by 3.15 inches (8 cm) wide.
37 C.F.R. §§2.52(b), (b)(1), 2.54(b), (d)-(e); see TMEP §§807.04(a)-(b), 807.07(a) et seq.
For marks not depicted in color, the mark itself should be depicted in black on a white background. 37 C.F.R. §2.52(b).
Further, the Office prefers that the drawing be on a separate sheet of non-shiny, white paper that is 8 to 8.5 inches wide and 11 to 11.69 inches long (20.3 to 21.6 cm wide and 27.9 to 29.7 cm long). One of the shorter sides of the sheet should be the top edge and include the caption “DRAWING PAGE.” 37 C.F.R. §2.54(a)-(c); TMEP §807.06(a).
The Office strictly enforces the drawing requirements.
Questions:
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.
/Lourdes D. Ayala/
Examining Attorney
Law Office 106
(571) 272- 9316
Fax: (571) 273-9106
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.
