Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

Serial Number  77/006302

 

Supplemental Office Action

In addition to all of the substantive issues and informalities raised in the Office Action dated February 8, 2007, which are incorporated by reference herein, applicant must also correct the following issue.  Please note that applicant must respond to all issues raised in this Office Action, as well as the previous Office Action of February 8, 2007, within six (6) months of the mailing date of this letter.  If applicant does not respond within this time limit, the application will be abandoned.

 

Mark is Merely Descriptive of the Services

Registration is refused because the proposed mark merely describes a feature of applicant’s goods and/or services.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §§1209 et seq.

 

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).

 

The applicant has applied to register the mark SHELLZ for buttons for use in home sewing and crafting, in International Class 26.  The definition of SHELL is:  a. The usually hard outer covering that encases certain organisms, such as mollusks, insects, and turtles; the carapace. b. A similar outer covering on an egg, a fruit, or a nut. c. The material that constitutes such a covering.[1]  The mark immediately describes and names the characteristics and features of the goods, namely, it refers to buttons made from shells.  (See attached page from applicant’s website).  Accordingly, the mark is refused registration on the Principal Register under Section 2(e)(1) of Trademark Act.

 

Response to Refusal

Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration. 

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.  Thank you.

 

                                    /Michael Webster/

 

Michael Webster

Examining Attorney

USPTO Law Office 102

571-272-9266

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above, and include the serial number, law office number, and examining attorney’s name.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.