UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

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: 3/19/2008

 

The assigned trademark examining attorney has reviewed the statement of use filed on 2/22/08, and has determined the following.

 

SOU Unacceptable: Mark Identifies a Process/System

 

Registration is refused because the proposed mark, as used on the specimen of record, merely identifies a process and/or system, and would not be perceived as a trademark for the goods identified in the application.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051, 1052 and 1127.  See In re Griffin Pollution Control Corp., 517 F.2d 1356, 186 USPQ 166 (C.C.P.A. 1975); Congoleum Corp. v. Armstrong Cork Co., 218 USPQ 528, 535 n.13 (TTAB 1983); In re Big Stone Canning Co., 169 USPQ 815 (TTAB 1971).

 

In this case, the specimen comprises a user’s manual for computer software marketed under the mark “MU−4000”.  The specimen indicates use solely to identify a process and/or system because the term “MRI” as used in applicant’s specimen of record, refers to a component function or system utilized by the software, not the software itself.  The specimen indicates that the term MRI means “MU ROBUSTNESS INDEX”.  Such an “index” does not function as a trademark because it does not identify the source of the goods to the purchasing public.  Rather, such a term would be perceived as referencing a component process utilized by applicant’s MU−4000 hardware.

 

Where a term is used solely to identify a process, style, method, system, or the like, it is not registrable as a trademark.  A process or system is only a way of doing something, and does not generally constitute a marketable or tangible product.  The name of a system or process does not function as a trademark unless it is also used to identify and distinguish the goods listed in the application, and to indicate the source of those goods.  The determination of whether matter functions solely as the name of a system or process and also as a trademark is based on a consideration of the manner in which the proposed mark is used, as evidenced by the specimen and any other information of record.  See In re Griffin Pollution Control Corp., 517 F.2d 1356, 186 USPQ 166 (C.C.P.A. 1975) (OXINITE held not to function as a trademark for a gas mixture because, based on the specimens of record, consumers would associate the mark only with a water treatment process and not with the identified goods); See also TMEP §1301.02(e).

 

Applicant may respond to this refusal by submitting a substitute specimen showing proper use of the proposed mark as a trademark (to indicate the source of the goods), along with a statement that “the substitute specimen was in use in commerce prior to the expiration of the time allowed to the applicant for filing a statement of use,” verified with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20. 37 C.F.R. §2.59(b)(2); TMEP §§904.09 and 1109.09(b).

 

 

/James Ringle/

Trademark Attorney

Law Office 111

571-272-9393

jim.ringle@uspto.gov

 

 

 

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 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.

 

 

 

 

 

                                                                

IMPORTANT NOTICE

USPTO OFFICE ACTION HAS ISSUED ON 3/19/2008 FOR

APPLICATION SERIAL NO. 77104090

 

Please follow the instructions below to continue the prosecution of your application:

  

VIEW OFFICE ACTION: Click on this link http://tmportal.gov.uspto.report/external/portal/tow?DDA=Y&serial_number=77104090&doc_type=OOA&mail_date=20080319 (or copy and paste this URL into the address field of your browser), or visit http://tmportal.gov.uspto.report/external/portal/tow and enter the application serial number to access the Office action.

 

PLEASE NOTE: The Office action may not be immediately available but will be viewable within 24 hours of this notification.

 

RESPONSE MAY BE REQUIRED: You should carefully review the Office action to determine (1) if a response is required; (2) how to respond; and (3) the applicable response time period. Your response deadline will be calculated from 3/19/2008.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System response form at http://www.gov.uspto.report/teas/eTEASpageD.htm.

 

HELP: For technical assistance in accessing the Office action, please e-mail

TDR@uspto.gov.  Please contact the assigned examining attorney with questions about the Office action. 

 

        WARNING

1. The USPTO will NOT send a separate e-mail with the Office action attached.

 

2. Failure to file any required response by the applicable deadline will result in the ABANDONMENT of your application.