UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 77/116455
MARK: PURE GOLD
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CORRESPONDENT ADDRESS: |
RESPOND TO THIS ACTION: http://www.gov.uspto.report/teas/eTEASpageD.htm
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/main/trademarks.htm
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APPLICANT: Kent-Gamebore Corporation
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.
The assigned examining attorney has reviewed the referenced application and determined the following.
DESCRIPTIVENESS UNDER 2(e)(1)
The examining attorney refuses registration on the Principal Register because the proposed mark is merely descriptive of the identified goods. Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1); TMEP section 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. 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).
In this case, applicant’s mark, “PURE GOLD” is a descriptive characteristic of the goods. The applicant’s goods are shotgun shells. The applicant’s mark merely describes a feature, quality or characteristic of applicant’s goods. The term GOLD describes a characteristic of the goods, that they contain GOLD. The term PURE is defined as “not mixed: not mixed with any other substance--This jacket is pure wool.” www.onelook.com. Because the shells are comprised of “pure gold,” each term in the proposed mark describes the goods. Because each term in the proposed mark describes the goods, the entire mark is descriptive based on Trademark Act Section 2(e)(1).
It is not necessary that a term describe all of the purposes, functions, characteristics or features of the goods to be merely descriptive. It is enough if the term describes one attribute of the goods. In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB I1973). Joining the word “PURE” to “GOLD” does not change the meaning of GOLD, it merely further describes a characteristic of the goods. Thus, the proposed mark is descriptive.
Finally, there is nothing incongruous or indefinite about the term “PURE GOLD.” Nothing requires the exercise of imagination, cogitation, mental processing or gathering of further information in order for a significant portion of the purchaser’s of applicant’s goods to readily perceive the merely descriptive significance of the mark as it relates to “shotgun shells.” Such significance in regard to the proposed mark would be immediately apparent. In re Gould Paper Corp., 5 USPQ2d 1110, 1112 (Fed. Cir. 1987)
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.
The examining attorney requires information about the goods to determine whether all or part of the mark is merely descriptive as applied to the goods. TMEP sec. 1105.02. The applicant must provide product information for the goods. This may take the form of a fact sheet, instruction manual, or advertisement. Specifically, the applicant must indicate whether the goods contain gold.
Trademark Rule 2.61(b) states "The examiner may require the applicant to furnish such information and exhibits as may be reasonably necessary to the proper examination of the application". The Trademark Trial and Appeal Board has upheld a refusal of registration based on the applicant's failure to provide information requested under this rule. In re Babies Beat Inc., 13 USPQ2d 1729 (TTAB 1990)(failure to submit patent information regarding configuration).
Applicant must provide the serial number of the foreign application that supports the filing basis under Trademark Act Section 44(d), 15 U.S.C. §1126(d). Paris Convention Article 4(D)(5); 37 C.F.R. §2.34(a)(4)(i)(A); TMEP §1003.
The application specifies both intent to use under Section 1(b) and a claim of priority under Section 44(d) based on a foreign application. 15 U.S.C. §§1051(b) and 1126(d). When an application is filed pursuant to Section 44(d), the USPTO presumes, unless otherwise indicated, that applicant intends to rely upon the resulting foreign registration as a basis for registration in the U.S. TMEP §§806.02(f) and 1003.03.
However, applicant may rely solely on intent to use as the basis for registration, and still claim the benefit of the priority filing date. If applicant wants to rely on intent to use as the sole basis for registration, with the claim of priority, applicant should submit an amendment so advising the undersigned. Once all other outstanding issues are resolved, the mark would be approved for publication without requiring a copy of the foreign registration. TMEP §§806.02(f) and 806.04(b). However, while the mark may be approved for publication, it will not register until an acceptable allegation of use has been filed.
If applicant does not indicate otherwise, the USPTO will presume that applicant is relying on the foreign registration as an additional basis for registration. Thus, the application will not be approved for publication until a copy of the foreign registration and, if appropriate, an English translation signed by the translator, have been filed. TMEP §§1004.01 and 1004.01(b).
SIGNED DECLARATION OMITTED
The application was not signed and verified, which are application requirements. 15 U.S.C. §§1051(a)-(b), 1126(d)-(e), 1141f(a); 37 C.F.R. §§2.33-2.34. Therefore, applicant must verify, in an affidavit or signed declaration under 37 C.F.R. §2.20, the facts set forth in the application.
If the application is based on an intent to use the mark in commerce under Trademark Act Section 1(b) or based on a foreign registration under Section 44, the verified statement must include the following allegation: “Applicant had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the application filing date.” 15 U.S.C. §§1051(b)(3)(B), 1126(d) and (e); 37 C.F.R. §§2.34(a)(2)(i), 2.34(a)(3)(i) and 2.34(a)(4)(ii); TMEP §§804.02, 806.01(b)-(d).
The application was not signed and verified, which are application requirements. 15 U.S.C. §§1051(a)-(b), 1126(d)-(e), 1141f(a); 37 C.F.R. §§2.33-2.34. Therefore, applicant must verify, in a signed affidavit or declaration under 37 C.F.R. §2.20, the following statement: “Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods and/or services listed in the application as of the filing date, and the facts set forth in the application are true and correct.” 37 C.F.R. §2.193(c)(1)(iii); TMEP §804.02.
If applicant responds to this Office action via TEAS, applicant may satisfy this requirement by adding the required statement (specified immediately above) to the TEAS response form, checking the box for a “signed declaration,” and properly signing the form by either (1) choosing an electronic signature consisting of any combination of letters, numbers, spaces and/or punctuation marks, preceded and followed by the forward slash (/) symbol (e.g., /johndoe/), and entering this in the signature block on the response form, or (2) attaching a JPG or PDF image of a declaration under 37 C.F.R. §2.20 (see declaration paragraph below) together with a pen-and-ink signature. TMEP §804.05.
If applicant responds to this Office action on paper, via regular mail, applicant may satisfy this requirement by providing the following declaration at the end of the response, properly signed and dated:
The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. 1001, and that such willful false statements and the like may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be entitled to use such mark in commerce; that applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods and/or services listed in the application as of the filing date; that the facts set forth in the application are true and correct; that to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; and that all statements made of his/her own knowledge are true and all statements made on information and belief are believed to be true.
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(Signature)
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(Print or Type Name and Position)
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(Date)
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. Section 1052(d). TMEP section 704.02.
/Caroline E. Wood/
Trademark Examining Attorney
Law Office 110
(571) 272-9243
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.