To: | BISSELL Homecare, Inc. (trademarks@mcgarrybair.com) |
Subject: | TRADEMARK APPLICATION NO. 77111294 - PET CONTOUR TOOL - 71189-2046 |
Sent: | 5/13/2007 3:53:14 PM |
Sent As: | ECOM101@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 77/111294
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 CONTOUR TOOL
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CORRESPONDENT’S REFERENCE/DOCKET NO: 71189-2046
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 77/111294
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 must address the following informalities:
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.
The applicant must disclaim the descriptive terms “PET” and “TOOL” apart from the mark as shown. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a).
The Office can require an applicant to disclaim exclusive rights to an unregistrable part of a mark, rather than refuse registration of the entire mark. Trademark Act Section 6(a), 15 U.S.C. §1056(a). Under Trademark Act Section 2(e), 15 U.S.C. §1052(e), the Office can refuse registration of the entire mark where it is determined that the entire mark is merely descriptive, deceptively misdescriptive, or primarily geographically descriptive of the goods. Thus, the Office may require the disclaimer of a portion of a mark which, when used in connection with the goods or services, is merely descriptive, deceptively misdescriptive, primarily geographically descriptive, or otherwise unregistrable (e.g., generic). TMEP §1213.03(a). If an applicant does not comply with a disclaimer requirement, the Office may refuse registration of the entire mark. TMEP §1213.01(b).
A “disclaimer” is thus a written statement that an applicant adds to the application record that states that applicant does not have exclusive rights, separate and apart from the entire mark, to particular wording and/or to a design aspect. The appearance of the applied-for mark does not change.
In this case, the term PET refers to “an animal kept for amusement or companionship,” e.g., dogs or cats.[1] TOOL refers to “a device, such as a saw, used to perform or facilitate manual or mechanical work.”[2] Applicant has identified goods encompassing vacuum cleaner tools for use in cleaning up after pets, i.e., cleaning pet hair or stains. As such, the referenced wording is merely descriptive because it states the nature and purpose of some or all of the applicant’s goods. See In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Newport Fastener Co. Inc., 5 USPQ2d 1064, 1067 n. 4 (TTAB 1987); TMEP §1213.08(c).
A properly worded disclaimer should read as follows:
“No claim is made to the exclusive right to use PET and TOOL apart from the mark as shown.”
Applicant must specify whether the wording “CONTOUR” or “CONTOUR TOOL” has any significance in the vacuum cleaner trade or industry or as applied to the goods described in the application. 37 C.F.R. §2.61(b).
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.