| To: | Domtar Inc. (email@casella-hespos.com) |
| Subject: | TRADEMARK APPLICATION NO. 77101279 - DOMTAR ANTIMICROBIAL - N/A |
| Sent: | 5/29/2007 7:54:14 PM |
| Sent As: | ECOM104@USPTO.GOV |
| Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 77/101279
MARK: DOMTAR ANTIMICROBIAL
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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: Domtar Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT EMAIL 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: 5/29/2007
The assigned examining attorney has reviewed the referenced application and determined the following.
No Conflicting Marks Noted
The Office records have been searched and no similar registered or pending mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.
The applicant must disclaim the descriptive wording “antimicrobial[1] office[2] paper[3]” apart from the mark as shown, because it merely describes a feature of the applicant’s goods, namely paper used in offices that inhibits the growth of microorganisms. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a).
Trademark Act Section 6(a), 15 U.S.C. §1056(a), permits the Office to require a disclaimer of an unregistrable component of a mark. Trademark Act Section 2(e), 15 U.S.C. §1052(e), bars the registration of a mark which is merely descriptive or deceptively misdescriptive, or primarily geographically descriptive of the goods. Therefore, the examining attorney may require the disclaimer of a portion of a mark which, when used in connection with the goods or services, is merely descriptive or deceptively misdescriptive, or primarily geographically descriptive. If an applicant does not comply with a disclaimer requirement, the examining attorney may refuse registration of the entire mark. TMEP §1213.01(b).
A disclaimer does not remove the disclaimed matter form the mark. It is simply a statement that the applicant does not claim exclusive rights in the disclaimed wording or design apart from the mark as shown.
The following cases explain the disclaimer requirement more fully: In re Kraft, Inc. 218 USPQ 571 (TTAB 1983); In re EBS Data Processing, Inc., 212 USPQ 964 (TTAB 1981); In re National Presto Industries, Inc., 197 USPQ 188 (TTAB 1977); In re Pendelton Tool Industries, Inc., 157 USPQ 114 (TTAB 1968).
The computerized printing format for the Trademark Official Gazette requires a standard form for a disclaimer. TMEP §1213.08(a)(i). A properly worded disclaimer should read as follows:
No claim is made to the exclusive right to use ANTIMICROBIAL OFFICE PAPER apart from the mark as shown.
See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).
Prior Registrations
If applicant is the owner of U.S. Registration Nos. 2444314, 0877808 and others then applicant must submit a claim of ownership. 37 C.F.R. §2.36; TMEP §812. The following standard format is suggested:
Applicant is the owner of U.S. Registration Nos. 2444314, 0877808 and others.
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.
/april rademacher/
April Rademacher
Senior Attorney
Law Office 104
571-272-9210
RESPOND TO THIS ACTION: If there are any questions about the Office action, please contact the assigned examining attorney. A response to this Office Action should be filed using the Office’s Response to Office action form available at http://www.gov.uspto.report/teas/eTEASpageD.htm. If notification of this Office action was received via e-mail, no response using this form may be filed for 72 hours after receipt of the notification. Do not attempt to respond by e-mail as 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.
an·ti·mi·cro·bi·al
an·ti·mi·cro·bi·al (àn´tê-mì-kro¹bê-el, àn´tì-) also an·ti·mi·cro·bic (-bîk)
adjective
Capable of destroying or inhibiting the growth of microorganisms: antimicrobial drugs.
— an´ti·mi·cro¹bial noun[1]
of·fice
of·fice (ô¹fîs, òf¹îs) noun
Abbr. off.
1. a. A place in which business, clerical, or professional activities are conducted. b. The administrative personnel, executives, or staff working in such a place.
2. A duty or function assigned to or assumed by someone. See synonyms at function.
3. A position of authority, duty, or trust given to a person, as in a government or corporation: the office of vice president.
4. a. A subdivision of a governmental department: the U.S. Patent Office. b. A major executive division of a government: the British Home Office.
5. A public position: seek office.
6. offices. Chiefly British. The parts of a house, such as the laundry and kitchen, in which servants carry out household work.
7. Often offices . A usually beneficial act performed for another.
8. Ecclesiastical. A ceremony, rite, or service, usually prescribed by liturgy, especially:. a. The canonical hours. b. A prayer service in the Anglican Church, such as Morning or Evening Prayer. c. A ceremony, rite, or service for a special purpose, especially a rite for the dead.
noun, attributive
Often used to modify another noun: office furniture; office buildings.
[Middle English, from Old French, duty, from Latin
officium.][2]
pa·per
pa·per (pâ¹per) noun
1. A material made of cellulose pulp, derived mainly from wood, rags, and certain grasses, processed into flexible sheets or rolls by deposit from an aqueous suspension, and used chiefly for writing, printing, drawing, wrapping, and covering walls.
2. A single sheet of this material.
3. One or more sheets of paper bearing writing or printing, especially:. a. A formal written composition intended to be published, presented, or read aloud; a scholarly essay or treatise. b. A piece of written work for school; a report or theme. c. Often papers . An official document, especially one establishing the identity of the bearer.
4. papers. A collection of letters, diaries, and other writings, especially by one person: the Madison papers.
5. Commercial documents that represent value and can be transferred from owner to owner; negotiable instruments considered as a group: “billions more invested in American stocks, bonds, certificates of deposit, and other paper” (Christian Science Monitor).
6. A newspaper.
7. Wallpaper.
8. A wrapper made of paper, often with its contents: a paper of pins.
9. Slang. a. A free pass to a theater. b. The audience admitted with free passes.
verb, transitive
pa·pered, pa·per·ing, pa·pers
1. To cover, wrap, or line with paper.
2. To cover with wallpaper.
3. To supply with paper.
4. Slang. To issue free passes for (a theater, for example).
5. To construct (something) in haste and with little forethought: papered together a new coalition of political convenience.
adjective
1. Made of paper.
2. Resembling paper, as in thinness or flimsiness.
3. Of or relating to clerical work: paper duties.
4. a. Existing only in printed or written form: paper profits; a paper corporation. b. Planned but not realized; theoretical.
— phrasal verb.
paper over
1. To put or keep out of sight; conceal: paper over a deficit with accounting gimmicks.
2. To downplay or gloss over (differences, for example), especially in order to maintain a nominal, apparent, or temporary unity.
— idiom.
on paper
1. In writing or print.
2. In theory, as opposed to actual performance or fact: It is a good team on paper, but its members play poorly together.
[Middle English, from Old French papier, from Latin
papýrus, papyrus plant, papyrus paper, from Greek papuros.]
— pa¹per·er noun[3]