Offc Action Outgoing

The specimen is not acceptable because it consists of advertising material for goods; in this case, an invoice. Section 45 of the Trademark Act requires use “on the goods or their containers or the displays associated therewith or on tags or labels affixed thereto.” 15 U.S.C. §1127; see 37 C.F.R. §2.56(b)(1); TMEP §§904.04(b)-(c).

Material that functions merely to tell prospective purchasers about the goods, or to promote the sale of the goods, is unacceptable to show trademark use. Indeed, invoices, business cards, announcements, price lists, listings in trade directories, order forms, bills of lading, leaflets, brochures, publicity releases, advertising circulars and other printed advertising material, while normally acceptable for showing use in connection with services, generally are not acceptable specimens for showing trademark use in connection with goods. See In re MediaShare Corp., 43 USPQ2d 1304, 1307 (TTAB 1997); In re Schiapparelli Searle, 26 USPQ2d 1520, 1522 (TTAB 1993); TMEP §§904.04(b)-(c).

The back of the submitted specimen shows the mark EZRETURN LABEL; however, this does not show good trademark use. Examples of specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the goods or packaging, or displays associated with the goods at their point of sale. TMEP §§904.03 et seq. It is assumed that the proposed mark is used in connection with shipping labels that are known by the brand name EZRETURN LABEL, so that applicant is in the business of manufacturing shipping labels for use by others. The specimen shows use of the proposed mark as more like a service, that is, the specimen states “AmeriMark has the solution to all your exchange and return problems. It’s a brand new service called EZRETURNLABEL. This useful program helps simplify the way you exchange and return merchandise.” Use of terms such as “service” and “program” in connection with the proposed mark makes it seem like the mark is in use with a service, not in use as a trademark that identifies “shipping labels.”

In fact, the above scenario results in a failure to function refusal. Registration is refused because the applied-for mark, as used on the specimen of record, merely identifies a process or system; it does not function as a trademark to identify and distinguish applicant’s goods from those of others and to indicate the source of applicant’s goods. Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051-1052, 1127; see In re Griffin Pollution Control Corp., 517 F.2d 1356, 1358-59, 186 USPQ 166, 167 (C.C.P.A. 1975) (holding the wording OXINITE as used on the specimen is the name of a process to improve degredation of domestic and industrial organic wastes and does not constitute a trademark for goods identified as a mixture of gases used in that process); TMEP §§904.07(b), 1202; cf. Congoleum Corp. v. Armstrong Cork Co., 218 USPQ 528, 535 n.13 (TTAB 1983) (holding the wording INLAID COLOR as used in advertising and sales promotion literature is the name of a manufacturing process by which a floor covering is made and does not identify the intended floor covering itself).

A process or system is a way of doing something, and is not generally a tangible product. Thus, the name of a system or process does not function as a trademark unless it is also used to indicate the source of the goods in the application. See In re Griffin Pollution, 517 F.2d at 1358-59, 186 USPQ at 167. Determining whether matter functions solely as the name of a system or process and also as a trademark is based on the manner in which the applied-for mark is used on the specimen and any other information of record pertaining to use of the mark. See TMEP §§1202, 1301.02(e).

A statement of use must include a specimen showing the applied-for mark in use in commerce for each class of goods in the statement of use. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.56, 2.88(b)(2); TMEP §§904, 904.07(a), 1109.09(b).

Applicant may respond to this refusal by submitting the following:

(1) A substitute specimen showing the mark in use in commerce each class of the goods specified in the statement of use; and

(2) The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “The substitute specimen was in use in commerce prior to the expiration of the time allowed applicant for filing a statement of use.” 37 C.F.R. §2.59(b)(2); TMEP §904.05. If submitting a specimen requires an amendment to the dates of use, applicant must also verify the amended dates. 37 C.F.R. §2.71(c).

Pending a proper response, registration is refused because the specimen does not show the applied-for mark in use in commerce as a trademark. 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.56, 2.88; TMEP §§904, 904.07(a), 1109.09(b).

Applicant may not withdraw the statement of use. 37 C.F.R. §2.88(g); TMEP §1109.17.

RESPONSE GUIDELINES

There is no required format or form for responding to an Office action. The Office recommends applicants use the Trademark Electronic Application System (TEAS) to respond to Office actions online at http://www.gov.uspto.report/teas/index.html. However, if applicant responds on paper via regular mail, the response should include the title “Response to Office Action” and the following information: (1) the name and law office number of the examining attorney, (2) the serial number and filing date of the application, (3) the mailing date of this Office action, (4) applicant’s name, address, telephone number and e-mail address (if applicable), and (5) the mark. 37 C.F.R. §2.194(b)(1); TMEP §302.03(a).

The response should address each refusal and/or requirement raised in the Office action. If a refusal has issued, applicant can argue against the refusal; i.e., applicant can submit arguments and evidence as to why the refusal should be withdrawn and the mark should register. To respond to requirements, applicant should set forth in writing the required changes or statements and request that the Office enter them into the application record.

The response must be personally signed or the electronic signature manually entered by applicant or someone with legal authority to bind applicant (i.e., a corporate officer of a corporate applicant, the equivalent of an officer for unincorporated organizations or limited liability company applicants, a general partner of a partnership applicant, each applicant for applications with multiple individual applicants). TMEP §§605.02, 712.

/Giselle M. Agosto/

Giselle M. Agosto

Trademark Examining Attorney

Law Office 102

Phone: (571) 272-5868

Fax: (571) 273-9102

RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.gov.uspto.report/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail. For technical assistance with the form, please e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned examining attorney. Do not respond to this Office action by e-mail; 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.