Offc Action Outgoing

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:

 

THIS IS A FINAL ACTION.

 

 

This action responds to applicant’s communication dated June 30, 2008.

 

The examining attorney finds the applicant’s arguments unpersuasive.  The Section 2(e)(1) refusal is continued and made FINAL.

 

Section 2(e)(1) – Descriptiveness Refusal 

 

Registration is refused because the applied-for mark merely describes a feature or characteristic of applicant’s goods and/or services.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

 

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods and/or services.  TMEP §1209.01(b); see In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005); In re Gyulay, 820 F.2d 1216, 1217-18, 3 USPQ2d 1009, 1010 (Fed. Cir. 1987).  Moreover, a mark that identifies a group of users to whom an applicant directs its goods and/or services is also merely descriptive.  TMEP §1209.03(i); see In re Planalytics, Inc., 70 USPQ2d 1453, 1454 (TTAB 2004).

 

In this case, applicant seeks registration of XEROSTATIC for coaxial cable and coaxial cable connectors.  The applicant stated in its response that XEROSTATIC is the phonetic equivalent of ZERO STATIC.  ZERO is defined as, “nil: having no quantity or magnitude; minimal: very small in amount or extent.”  STATIC is defined as, “relating to, involving, or characteristic of stationary electric charges.”  Zero static, then, is the equivalent of no static or minimal static.   A feature of applicant’s cables and connectors is the reduction or elimination of static or other noise in the use of electronic equipment.

 

In response to a request for information, the applicant provided a copy of its website which indicated that the goods are “treated with a special antistatic layer” to reduce static noise and microphonics.  The applicant, in its most recent response, stated that the description of the goods contained in the draft website page was inaccurate, and has now been amended to describe the goods as having “a special polyetheylene layer as an dielectric insulator covering the core in the cable plus a polyvinylchoride PVC jacket material which will help to cut noise and reduce microphics.”  The description is essentially the same.  Microphonics is definied as, “noise in the output of various electronic devices, as a speaker, caused by mechanical vibration of some part.”  (See attached definition.)  Thus, a feature of applicant’s cables and connectors is the reduction or elimination of static or other noise in the use of electronic equipment.

 

Further, as stated in the previous action, a novel spelling of a merely descriptive word or term is also merely descriptive if purchasers would perceive the different spelling as the equivalent of the descriptive word or term.  See In re Hercules Fasteners, Inc., 203 F.2d 753, 97 USPQ 355 (C.C.P.A. 1953) (holding “FASTIE,” phonetic spelling of “fast tie,” merely descriptive of tube sealing machines); Andrew J. McPartland, Inc. v. Montgomery Ward & Co., 164 F.2d 603, 76 USPQ 97 (C.C.P.A. 1947) (holding “KWIXTART,” phonetic spelling of “quick start,” merely descriptive of electric storage batteries); In re State Chem. Mfg. Co., 225 USPQ 687 (TTAB 1985) (holding “FOM,” phonetic equivalent spelling of “foam,” merely descriptive of foam rug shampoo); TMEP §1209.03(j).

 

Applicant’s Arguments:

 

The applicant states that the goods were not described accurately in the draft webpage provided in response to the request for information.  The applicant provided an amended description of the goods.  As discussed above, the revised description of the goods still indicates that a feature of the cables is to reduce or eliminate static or other noise when using electronic equipment.  Further, the information that applicant provided in the November 2007 response indicates that the applicant’s goods have a “special coating in the cable [that] cuts noise – high end loss – and microphonics.”

 

The applicant also argues that XEROSTATIC is also the phonetic equivalent of X-ERO and ES-TATIC.   While the mark may have other pronounciations, it is not relevent to a descriptiveness determination.  Descriptiveness is considered in relation to the relevant goods and/or services.  The fact that a term may have different meanings in other contexts is not controlling on the question of descriptiveness.  In re Chopper Indus., 222 USPQ 258, 259 (TTAB 1984); In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979); TMEP §1209.03(e).  As stated earlier, the mark is the phonetic equivalent of “ZERO STATIC” which is a descriptive term when used in connection with applicant’s goods.

 

Therefore, the proposed mark merely describes a feature of the applicant’s goods, and registration on the Principal Register must be refused under Trademark Act Section 2(e)(1).  This refusal is continued and made FINAL.

 

Supplemental Register

 

The applied-for mark has been refused registration on the Principal Register.  Applicant may respond to the refusal by submitting evidence and arguments in support of registration and/or by amending the application to seek registration on the Supplemental Register.  See 15 U.S.C. §1091; 37 C.F.R. §§2.47, 2.75(a); TMEP §§801.02(b), 816.  Amending to the Supplemental Register does not preclude applicant from submitting evidence and arguments against the refusal(s).

 

Although registration on the Supplemental Register does not afford all the benefits of registration on the Principal Register, it does provide the following advantages:

                               

• The registrant may use the registration symbol ®;
• The registration is protected against registration of a confusingly similar mark under Trademark Act Section 2(d);
• The registrant may bring suit for infringement in federal court; and
• The registration may serve as the basis for a filing in a foreign country under the Paris Convention and other international agreements.

 

See 15 U.S.C. §§1052(d), 1091, 1094; TMEP §815.

 

 

Response to Final Action

 

If applicant does not respond within six months of the mailing date of this final Office action, the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond to this final Office action by: 

 

(1)     Submitting a response that fully satisfies all outstanding requirements, if feasible; and/or

 

(2)     Filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class.

 

37 C.F.R. §§2.6(a)(18), 2.64(a); TBMP ch. 1200; TMEP §714.04.

 

In certain rare circumstances, a petition to the Director may be filed pursuant to 37 C.F.R. §2.63(b)(2) to review a final Office action that is limited to procedural issues.  37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

 

/Andrea P. Butler/

Andrea P. Butler

Trademark Examining Attorney

Law Office 102

(571) 272-7491

andrea.butler@uspto.gov

 

 

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.