UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

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 DATE BELOW.

 

ISSUE/MAILING DATE:

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SEARCH RESULTS

 

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

SUMMARY OF ISSUES:

 

• Section 2(e)(1) Descriptiveness Refusal
• Clarification of the Identification/Classification of Services
• Standard Character Inquiry

 

I.                      SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE

 

Registration is refused because the applied-for mark merely describes a feature, characteristic, and/or purpose of applicant’s goods and/or services.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

 

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods and/or services.  TMEP §1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)). 

 

The applicant has applied to register OBITCHECK in International Class 045 for “providing obituary information for pension fund and 401(k) administrators, insurance companies, banks, unions, public and municipal employee retirement systems, state teachers' retirement systems, investment firms, card card companies, epidemiology departments and organizations that have a financial interest in knowing the mortality of their pensioners, policyholders, beneficiaries, members, and account holders.”

 

As confirmed by the attached printout from CollinsDictionary.com, OBIT is short for Obituary, which is “a published announcement of a death, often accompanied by a short biography of the dead person.” As also confirmed by an attached printout from CollinsDicitonary.com, CHECK means “to investigate in order to determine the condition, validity, etc. of something.” When combined and viewed in light of applicant’s goods/services, the wording merely describes a service allowing pension fund and 401(k) administrators, insurance companies, banks, unions, public and municipal employee retirement systems, state teachers' retirement systems, investment firms, card card companies, epidemiology departments and organizations that have a financial interest in knowing the mortality of their pensioners, policyholders, beneficiaries, members, and account holders to investigate obituary listings to determine the mortality of such persons. Thus, the wording OBITCHECK is merely descriptive of a purpose of applicant’s services, namely, to investigate obituary listings to determine the mortality of persons of interest to the users of applicant’s services.

 

In light of the foregoing, registration is REFUSED on the Principal Register.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

II.        CLARIFICATION OF THE IDENTIFICATION OF SERVICES

 

As filed, the identification of services appears as follows:

 

• International Class 045: providing obituary information for pension fund and 401(k) administrators, insurance companies, banks, unions, public and municipal employee retirement systems, state teachers' retirement systems, investment firms, card card companies, epidemiology departments and organizations that have a financial interest in knowing the mortality of their pensioners, policyholders, beneficiaries, members, and account holders

 

The above-bolded wording in the identification of services is indefinite and must be clarified because it does not adequately specify the nature of applicant’s services.  See TMEP §§1402.01, 1402.03.  Applicant may adopt the following identification, if accurate:  

 

• International Class 042: Computer services, namely, providing search engines for obtaining obituary information, with said search engines being intended for use by pension fund and 401(k) administrators, insurance companies, banks, unions, public and municipal employee retirement systems, state teachers' retirement systems, investment firms, card card companies, epidemiology departments and organizations have a financial interest in knowing the mortality of their pensioners, policyholders, beneficiaries, members, and account holders

 

An applicant may amend an identification of services only to clarify or limit the services; adding to or broadening the scope of the services is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07 et seq.

 

For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual at http://tess2.gov.uspto.report/netahtml/tidm.html.  See TMEP §1402.04.

 

III.       STANDARD CHARACTER INQUIRY – UNCLEAR IF STANDARD CHARACTERS INTENDED

 

The drawing shows the mark with minor stylization; however, the application does not include a standard character claim.  Thus, applicant must clarify whether the mark is presented in standard characters or in a special form drawing format.  TMEP §807.03(h).

 

A standard character drawing depicts a mark only in Latin characters, Roman or Arabic numerals, and common punctuation or diacritical marks, with no design element or stylization and no claim to any particular font style, size or color.  37 C.F.R. §2.52(a); TMEP §807.03(a).  A special form drawing, however, is used to depict a mark with stylized lettering, color, and/or design elements.  37 C.F.R. §2.52(b); TMEP §807.04(a).

 

In this case, a standard character drawing would be acceptable because the wording creates a distinct commercial impression apart from any stylization or design element on the specimen.  See In re wTe Corp., 87 USPQ2d 1536, 1539-40 (TTAB 2008); TMEP §807.04. 

 

If the mark is in standard characters, applicant must submit the following statement:  “The mark consists of standard characters without claim to any particular font style, size, or color.”  37 C.F.R. §2.52(a); TMEP §807.03(a).  If the mark is shown in a special form drawing format, applicant must state so and also ensure that an accurate description of the mark is included in the record.  See 37 C.F.R. §2.52(b); TMEP §§807.04 et seq.

 

RESPONSE GUIDELINES

 

For this application to proceed toward registration, applicant must explicitly address each refusal and/or requirement raised in this Office action.  If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register.  Applicant may also have other options for responding to a refusal and should consider such options carefully.  To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements and request that the Office enter them into the application record. 

 

Applicant’s response must be properly signed by (1) the individual applicant (for joint individual applicants, both must sign) or (2) someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner).  See 37 C.F.R. §§2.62(b), 2.193(a), (e)(2)(ii); TMEP §§611.03(b), 611.06 et seq., 712.01.  If applicant retains an attorney, the attorney must sign the response.  37 C.F.R. §2.193(e)(2)(i); TMEP §§611.03(b), 712.01.  The individual(s) signing must personally sign or personally enter his/her electronic signature.  See 37 C.F.R. §2.193(a), (e)(2)(ii); TMEP §§611.01(b), 611.02.

 

If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end, the trademark will fail to register, and the application fee will not be refunded.  See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a), 2.209(a); TMEP §§405.04, 718.01, 718.02.  In such case, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to live status.  See 37 C.F.R. §2.66; TMEP §1714.   There is a $100 fee for such petitions.  See 37 C.F.R. §§2.6, 2.66(b)(1).

 

 

 

/Kevin S. Corwin/

Trademark Examining Attorney

Law Office 112

571-270-1521 (Voice)

571-270-2521 (Fax)

Kevin.Corwin@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.