Offc Action Outgoing

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING BELOW DATE.

ISSUE/MAILING DATE:

THIS IS A FINAL ACTION.

INTRODUCTION

This Office action is in response to applicant’s response filed on December 26, 2012, for which the trademark examining attorney thanks applicant.

In the previous Office Action dated December 13, 2012, the trademark examining attorney refused registration of the applied-for mark under Trademark Act Sections 1, 2 and 45.

Based on applicant’s response which the trademark examining attorney has carefully considered and found to be unpersuasive, the trademark examining attorney maintains and now makes FINAL the refusal based on Trademark Act Sections 1, 2 and 45. See 37 C.F.R. §2.64(a); TMEP §714.04.

SUMMARY OF ISSUE MADE FINAL that applicant must address:

Sections 1, 2 and 45 Refusal – Specimen does not show use of the applied-for mark as a trademark

SECTIONS 1, 2 AND 45 REFUSAL – FINAL

SPECIMEN DOES NOT SHOW APPLIED-FOR MARK AS A TRADEMARK

As detailed in the First Office Action issued on December 13, 2012 regarding the specimen filed with the Statement of Use, registration of the subject application is refused because the applied-for mark, SINGLE SOLUTION MEDIUM, as used on the specimen of record, does not function as a trademark to identify and distinguish applicant’s goods from those of others and to indicate the source of applicant’s goods. Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051-1052, 1127; see In re Phoseon Tech., Inc., 103 USPQ2d 1822, 1827-28 (TTAB 2012); In re Remington Prods., Inc., 3 USPQ2d 1714, 1715 (TTAB 1987); TMEP §§904.07(b); 1202 et seq. This refusal is maintained and made FINAL.

The applied-for mark, as shown on the specimen, does not function as a trademark in this case because of the manner of its use on the specimen which consists of an insert that accompanies the identified goods, namely, “Chemicals for use in medical science, namely, fertility enhancement preparations for use in culturing and extended culturing of embryos; and diagnostic reagents for clinical and medical laboratory use,” in International Class 5.

Although the applied-for mark, SINGLE SOLUTION MEDIUM, is capable of functioning as trademark for use in connection with the identified goods, its use, as presently demonstrated on the specimen of use of record, does not show use of the applied-for mark in a manner that allows it to identify the goods such that a consumer would understand the applied-for mark to be the source indicator of the goods. Instead, SINGLE SOLUTION MEDIUM is used as part of a sentence that is seemingly intended to provide further information regarding the nature of “global® medium” as the mark is situated after “is” and indicates that the “global® medium is a ‘Single Solution Medium™’.” Thus, while the trademark examining attorney respectfully agrees with applicant that the applied-for mark is capable of registration on the Supplemental Register and apologizes for any misunderstanding in that regard, the trademark examining attorney also respectfully directs applicant’s attention to the basis for the refusal in that the refusal is regarding the specimen of record not providing a sufficient showing of the applied-for mark being used to indicate the source of the identified goods, not that the applied-for mark is not capable of functioning as a trademark.

Additionally, as also detailed in the First Office Action pertaining to this refusal, the use of “TM” in this instance does not serve to elevate the wording to actual trademark status; simply inserting “TM” after wording does not enable particular wording to function as a trademark. On the specimen submitted with the Statement of Use, the applied-for mark appears in a sentence where it is the descriptive portion following the definitive “is”; the applied-for mark forms the predicate, the part of the sentence that says something about the subject, namely “global® medium,” and its function is to inform the consumer as to the nature of the goods in that they are a “single solution medium” meaning that the goods are made up of only one solution in the medium. The applied-for mark as used on the present specimen of record only shows the applied-for mark in a descriptive capacity with respect to the goods, not as an actual name of the goods.

Applicant should be aware that use of the symbol “TM” next to the mark on the specimen merely shows applicant’s intent to claim the applied-for mark as a trademark and is not an indicator of whether a mark is actually perceived by the public as a source-indicator. See In re Remington Prods. Inc., 3 USPQ2d 1714, 1715 (TTAB 1987); In re Anchor Hocking Corp., 223 USPQ 85, 88 (TTAB 1984); In re Indus. Washing Mach. Corp., 201 USPQ 953, 955 (TTAB 1979); TMEP §1202.

Thus, in consideration of all the foregoing, the specimen is not acceptable as it does not show use of the mark in connection with the identified goods as a trademark.

The specimen, along with any other relevant evidence of record, is reviewed to determine whether an applied-for mark is being used as a trademark. In re Bose Corp., 546 F.2d 893, 192 USPQ 213 (C.C.P.A. 1976); In re Volvo Cars of N. Am., Inc., 46 USPQ2d 1455 (TTAB 1998). Not every word, design, symbol or slogan used in the sale or advertising of goods functions as a mark, even though an individual may have adopted it with the intent to do so. The USPTO will not register a designation unless purchasers would be likely to regard it as a source-indicator for the goods. In re Manco, Inc., 24 USPQ2d 1938 (TTAB 1992); TMEP §1202.

Applicant may respond to this refusal by submitting the following:

(1) A substitute specimen showing the mark in use in commerce for the goods specified in the statement of use; and

(2) The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “The substitute specimen was in use in commerce prior to the expiration of the time allowed applicant for filing a statement of use.” 37 C.F.R. §2.59(b)(2); TMEP §904.05; see 37 C.F.R. §2.193(e)(1). If submitting a substitute specimen requires an amendment to the dates of use, applicant must also verify the amended dates. 37 C.F.R. §2.71(c); TMEP §904.05.

Examples of 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. See TMEP §§904.03 et seq.

Pending receipt of a proper response, registration is refused because the applied-for mark as depicted on the specimen of use does not function as a trademark to identify and distinguish applicant’s goods from those of others and to indicate the source of applicant’s goods. Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051-1052, 1127; see In re Phoseon Tech., Inc., 103 USPQ2d 1822, 1827-28 (TTAB 2012); In re Remington Prods., Inc., 3 USPQ2d 1714, 1715 (TTAB 1987); TMEP §§904.07(b); 1202 et seq.

Therefore, the above stated refusal is maintained and made FINAL.

Applicant may not withdraw the statement of use. 37 C.F.R. §2.88(g); TMEP §1109.17.

OPTIONS FOR FILING SUBSTITUTE SPECIMEN

Applicant may respond to the stated specimen refusal by submitting a verified substitute specimen by following the suggested directions below for responding either online or by mail.

If applicant responds to this Office action online via the Trademark Electronic Application System (TEAS), applicant should provide a substitute specimen as follows: (1) answer “yes” to the TEAS response form wizard question to “submit a new or substitute specimen;” (2) attach a jpg or pdf file of the substitute specimen; (3) select the statement that “The substitute specimen(s) was in use in commerce prior to the expiration of the deadline for filing the statement of use.”; and (4) sign personally or enter personally his/her electronic signature, name in printed or typed form, and date after the declaration at the end of the TEAS response form. See 37 C.F.R. §§2.59(b)(2), 2.193(a), (c)-(d), (e)(1); TMEP §§611.01(c), 804.01(b). Please note that these steps appear on different pages of the TEAS response form.

If applicant experiences difficulty in submitting the required substitute specimen, supporting statement and/or declaration, please e-mail TEAS@uspto.gov for technical assistance regarding the TEAS response form.

If applicant responds to this Office action on paper, via regular mail, applicant may provide a verified substitute specimen by (1) personally signing, dating, and printing or typing the name of the signatory in the declaration below; and (2) submitting a substitute specimen showing the applied-for mark in use in commerce. See 37 C.F.R. §§2.20, 2.59(b)(2), 2.193(a)(1), (d), (e)(1); TMEP §§611.01(b), 804.01(b), 904.05.

The undersigned being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements and the like may jeopardize the validity of the application or document or any registration resulting therefrom, declares that the substitute specimen was in use in commerce prior to the expiration of the deadline for filing the statement of use; 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)

PROPER RESPONSE TO A FINAL REFUSAL

Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a). Applicant may respond by providing one or both of the following:

(1) A response that fully satisfies all outstanding requirements;

(2) An appeal to the Trademark Trial and Appeal Board, with the appeal fee of $100 per class.

37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.

In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review 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).

APPLICANT MAY CONTACT THE TRADEMARK EXAMINING ATTORNEY

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney. All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response. See 37 C.F.R. §2.191; TMEP §§304.01-.02, 709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.

Further action on the subject application awaits applicant’s response to the above detailed issue.

Sincerely,

/Kathleen L. Kolacz/

Kathleen L. Kolacz

Trademark Examining Attorney

Law Office 114

phone: (571) 272-3650

email: kathleen.kolacz@uspto.gov

TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

All informal e-mail communications relevant to this application will be placed in the official application record.

WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.

PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.