To: | BISSELL Homecare, Inc. (trademarks@mcgarrybair.com) |
Subject: | TRADEMARK APPLICATION NO. 77110760 - PET PACK - 71189-2042 |
Sent: | 5/14/2007 10:21:49 AM |
Sent As: | ECOM101@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 |
UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 77/110760
APPLICANT: BISSELL Homecare, Inc.
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: PET PACK
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CORRESPONDENT’S REFERENCE/DOCKET NO: 71189-2042
CORRESPONDENT EMAIL ADDRESS: |
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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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 77/110760
The assigned examining attorney has reviewed the referenced application and determined the following.
NO CONFLICTING MARKS
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. However, the applicant should note the following ground for refusal.
DESCRIPTIVENESS
The examining attorney refuses registration on the Principal Register because the proposed mark merely describes the goods/services. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §§1209 et seq.
A mark is merely descriptive under Trademark Act Section 2(e)(1), 15 U.S.C. 1052(e)(1), if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant goods/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 section 1209.01(b).
The applicant has requested registration of the wording PET PACK in connection with “Vacuum cleaner attachments and accessories.”
The term PET is defined as “an animal kept for amusement or companionship,”[1] e.g., a dog or cat. PACK refers to “a collection of items tied up or wrapped; a bundle” or “a complete set of related items.”[2] Applicant has identified cleaning tools encompassing those sold in a pack for cleaning up after pets. As such, the applicant’s mark PET PACK when used for vacuum attachments/accessories immediately conveys to potential consumers a key characteristic of the goods, namely, their collective nature and purpose. The examiner also attaches excerpts from an online search indicating the descriptive nature of the term PET in relation to vacuum cleaning.
As the applicant’s mark immediately indicates a feature or quality of the goods/services, the mark is merely descriptive and registration is refused.
AMENDMENT TO THE SUPPLEMENTAL REGISTER
Although an amendment to the Supplemental Register would normally be an appropriate response to this refusal, such a response is not appropriate in the present case until an acceptable allegation of use is filed. The instant application was filed under Trademark Act Section 1(b), 15 U.S.C. §1051(b), and is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use under 37 C.F.R. §2.76 or statement of use under 37 C.F.R. §2.88 has been timely filed. 37 C.F.R. §2.47(d); TMEP §815.02, 816.02 and 1102.03.
If applicant files an allegation of use and also amends to the Supplemental Register, please note that the effective filing date of the application will then be the date of filing of the allegation of use. 37 C.F.R. §2.75(b); TMEP §§206.01 and 816.02.
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 chooses to respond to the refusal to register, the applicant must also respond to the following informalities.
DISCLAIMER REQUIRED
The applicant must disclaim the term “PACK” apart from the mark as shown. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a). The term merely states the common commercial name of the applicant’s services, namely, providing a collective “pack” of vacuum cleaner attachments and/or accessories. The applicant must insert the required disclaimer even if registration of the mark is sought on the Supplemental Register because the referenced term is generic for the identified goods. In re Wella Corp., 565 F.2d 143, 196 USPQ 7 (CCPA 1977); In re Creative Goldsmiths of Washington, Inc., 229 USPQ 766 (TTAB 1986); In re Carolyn's Candies, Inc., 206 USPQ 356 (TTAB 1980); TMEP section 1213.02(b).
A disclaimer does not physically remove the disclaimed matter from the mark, but rather is a written statement that applicant does not claim exclusive rights to the disclaimed wording and/or design separate and apart from the mark as shown in the drawing.
A properly worded disclaimer should read as follows:
“No claim is made to the exclusive right to use PACK apart from the mark as shown.”
The wording “attachments and accessories” in the identification of goods is unacceptable as indefinite. The applicant must amend the identification to specify the commercial name of the goods. If there is no common commercial name for the product, the applicant must describe the product and its intended uses. TMEP §1402.01. For example, the identification may be amended in the following manner, if accurate:
“Vacuum cleaner attachments and accessories, namely, (specify, e.g., vacuum cleaner hoses, suction nozzles for vacuum cleaners),” in Class 7.
Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.
For assistance with identifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.
Advisory: Combined Application
If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those goods/services based on an intent to use the mark in commerce under Trademark Act Section 1(b):
The filing fee for adding classes to an application is as follows:
37 C.F.R. §§2.6(a)(i) and (ii); TMEP §810.
If the applicant has any questions or needs assistance in responding to this Office action, please e-mail or telephone the assigned examining attorney.
/SMP/
Steven M. Perez
Trademark Attorney
Law Office 101
(571) 272-5888
steven.perez@uspto.gov
NOTICE OF NEW PROCEDURE FOR E-MAILED OFFICE ACTIONS: In late spring 2007, for any applicant who authorizes e-mail communication with the USPTO, the USPTO will no longer directly e-mail the actual Office action to the applicant. Instead, upon issuance of an Office action, the USPTO will e-mail the applicant a notice with a link/web address to access the Office action using Trademark Document Retrieval (TDR), which is located on the USPTO website at http://portal.gov.uspto.report/external/portal/tow. The Office action will not be attached to the e-mail notice. Upon receipt of the notice, the applicant can then view and print the actual Office action and any evidentiary attachments using the provided link/web address. TDR is available 24 hours a day, seven days a week, including holidays and weekends. This new process is intended to eliminate problems associated with e-mailed Office actions that contain numerous attachments.
HOW TO RESPOND TO THIS OFFICE ACTION:
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.
[1]The American Heritage® Dictionary of the English Language, Third Edition copyright © 1992 by Houghton Mifflin Company. Electronic version licensed from INSO Corporation; further reproduction and distribution restricted in accordance with the Copyright Law of the United States. All rights reserved.
[2]The American Heritage® Dictionary of the English Language, Third Edition copyright © 1992 by Houghton Mifflin Company. Electronic version licensed from INSO Corporation; further reproduction and distribution restricted in accordance with the Copyright Law of the United States. All rights reserved.