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: 6/11/2007

 

The assigned examining attorney has reviewed the referenced application and has determined the following.

 

I.            SEARCH OF THE OFFICE RECORDS

 

No Prior Conflicting Marks

The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.

 

II.            SUBSTANTIVE REFUSAL

 

Application Refused--Section 2(e)(1)—Mark Is Merely Descriptive

The examining attorney refuses registration on the Principal Register because the proposed mark merely describes the goods and/or services identified in the application.  Trademark Act Section 2(e)(1), 15 U.S.C. Section 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 and/or 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 §1209.01(b).  A mark that describes an intended user of a product or service is also merely descriptive within the meaning of Section 2(e)(1).  Hunter Publishing Co. v. Caulfield Publishing Ltd., 1 USPQ2d 1996 (TTAB 1986); In re Camel Mfg. Co., Inc., 222 USPQ 1031 (TTAB 1984); In re Gentex Corp., 151 USPQ 435 (TTAB 1966).

 

The examining attorney must consider whether a mark is merely descriptive in relation to the identified goods and/or services, not in the abstract.  In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978); In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985). TMEP §1209.01(b).

 

The applicant applied to register REMOTEAPP for software for computer software for remotely displaying computer applications running on another computer.

 

The Term “REMOTEAPP” is Descriptive

In the computer industry, the term APP is widely used to denote the word “application.” American Heritage Dictionary of the English Language 4^th ed., (2000). (See enclosed.)  An APPLICATION is “a computer program with a user interface; or a computer program designed for a specific task or use.” American Heritage Dictionary of the English Language 4^th ed., (2000). (See enclosed.)  The term REMOTE means “operating or controlled from a distance; or located at a distance from another computer that is accessible by cables or other communications links.” American Heritage Dictionary of the English Language 4^th ed., (2000). (See enclosed.) 

 

The combination of the terms comprising the mark presumably describe, name, or inform the public about certain characteristics, features, and/or benefits of the applicant’s goods.  Indeed, taken as a whole, the mark immediately conveys an idea regarding a feature or purpose of the goods the applicant will provide, namely, that the applicant’s software programs allow one to control the operation of a computer program with a user interface located at a distance from another computer on a single computer.  Indeed, the applicant own website supports this finding. (See enclosed.)  Because the proposed mark taken as a whole immediately denotes without conjecture or speculation, a characteristic or feature of the goods the applicant will provide, the mark is descriptive of those identified goods.  Accordingly, the examining attorney refuses registration on the Principal Register pursuant to Section 2(e)(1) of Trademark Act because the mark merely describes the goods and/or services identified in the application. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §§1209 et seq.

 

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.

 

Supplemental Register Suggested

Although the examining attorney has refused registration on the Principal Register, the applicant may respond to the stated refusal under Section 2(e)(1) by amending the application to seek registration on the Supplemental Register.  Trademark Act Section 23, 15 U.S.C. §1091; 37 C.F.R. §§2.47 and 2.75(a); TMEP §§801.02, 815, and 816 et seq.

 

Please Note:  A mark in an application under Trademark Act Section 1(b), 15 U.S.C. §1051(b), 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) and 2.75(b); TMEP §§815.02, 816.02 and 1102.03. When an application is changed from the Principal Register to the Supplemental Register, the effective filing date of the application is considered to be the filing date of the amendment to allege use or statement of use and the examining attorney will conduct a new search of the Office records for conflicting marks. 37 C.F.R. §2.75(b); TMEP §§206.01, 816.02 and 1102.03.

 

Applicant’s Response

No set form is required for response to this Office action.  When responding to this Office action, the applicant must make sure to respond in writing to each refusal and requirement raised.  The applicant must sign and date the response.  In addition, the applicant should also include the following information on all correspondence with the Office:  (1) the name and law office number of the examining attorney; (2) the serial number of this application; (3) the mailing date of this Office action; and, (4) the applicant's telephone number to speed up further processing.

 

Applicants, registration owners, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at www.uspto.gov.

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

/Michael Tanner/

Michael Tanner

Trademark Attorney

Law Office 117

Telephone: 571-272-9706

 

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.

 

 

 

 

                                                                

IMPORTANT NOTICE

USPTO OFFICE ACTION HAS ISSUED ON 6/11/2007 FOR

APPLICATION SERIAL NO. 77112289

 

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

  

VIEW OFFICE ACTION: Click on this link http://portal.gov.uspto.report/external/portal/tow?DDA=Y&serial_number=77112289&doc_type=OOA&mail_date=20070611 (or copy and paste this URL into the address field of your browser), or visit http://portal.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 6/11/2007.

 

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.