UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

SECOND 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: 6/16/2008

 

This Office action is in response to applicant’s communication filed on June 11, 2008. In an Office Action issued December 13, 2007, the examining attorney refused registration on the Principal Register under Section 2(e)(4) of the Trademark Act, finding applicant’s mark to be primarily merely a surname. Additionally, the examining attorney required applicant to submit an amended identification of goods and services. In its Response, applicant has claimed Section 2(f) acquired distinctiveness in its mark, on the basis of its prior registration, Registration No. 1834298. For the reasons set forth below, the examining attorney rejects applicant’s claim of Section 2(f). Further, applicant’s amended identification of goods and services is partially acceptable. Applicant’s services in Class 42 continue to feature indefinite wording. Thus, the Section 2(e)(4) refusal, and the requirement for an acceptable identification of services, are each maintained and continued.

 

Section 2(f) Claim Unacceptable For Intent-to-Use Application

 

Applicant has asserted a claim of acquired distinctiveness based on its ownership of Registration No. 1834298.

 

An intent-to-use applicant who has used the mark on related goods and/or services may file a claim of acquired distinctiveness under Trademark Act Section 2(f) before filing an allegation of use if applicant can establish that, as a result of applicant’s use of the mark on other goods and/or services, the mark has become distinctive of the goods and/or services in the intent-to-use application, and that this previously created distinctiveness will transfer to the goods and/or services in the intent-to-use application when use in commerce begins.  In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1347, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001); TMEP §1212.09(a). 

 

The Trademark Trial and Appeal Board has set forth the requirements for showing that a mark in an intent-to-use application has acquired distinctiveness:

 

(1)     Applicant must establish that the same mark has acquired distinctiveness as to the other goods and/or services, by submitting evidence such as ownership of a prior registration for the same mark for related goods and/or services, a prima facie showing of acquired distinctiveness based on five years’ use of the same mark with related goods and/or services, or actual evidence of acquired distinctiveness for the same mark with respect to the other goods and/or services; and

 

(2)     Applicant must show the extent to which the goods and/or services recited in the intent-to-use application are related to the goods and/or services in connection with which the mark has acquired distinctiveness to warrant the conclusion that the previously created distinctiveness will transfer to the goods and/or services in the application upon use.  The showing necessary to establish relatedness will be decided on a case by case basis and will depend upon the nature of the goods and/or services involved and the language used to identify them in the application.

 

Kellogg Co. v. Gen. Mills Inc., 82 USPQ2d 1766, 1771 (TTAB 2007); In re Rogers, 53 USPQ2d 1741, 1744-45 (TTAB 1999); TMEP §1212.09(a).

 

Registration No. 1834298 is not the same mark as the mark featured in the present application. The present application features solely the wording OTSUKA in a slightly stylized font. The mark in the claimed registration is a composite mark featuring the literal element OTSUKA AMERICAN PHARMACEUTICALS. The stylized wording in the registered mark is different from the stylized wording in the present mark. Additionally, applicant has not provided any evidence that the goods and services in the present application are related to the goods in the claimed registration[1]. 

 

As described in Section 1212.09(a) of TMEP, an applicant’s bare statement of relatedness is insufficient for showing acquired distinctiveness.

 

[A]pplicant must establish, through submission of relevant evidence rather than mere conjecture, a sufficient relationship between the goods or services in connection with which the mark has acquired distinctiveness and the goods or services recited in the intent-to-use application to warrant the conclusion that the previously created distinctiveness will transfer to the goods or services in the application upon use. In re Rogers, 53 USPQ2d 1741, 1744 (TTAB 1999).

 

Thus, the examining attorney rejects applicant’s claim of Section 2(f) acquired distinctiveness, and maintains the Section 2(e)(4) refusal.

 

Identification of Services – CLASS 42

 

Applicant has amended the wording “providing computer programs,” in Class 42, to the following: “providing on-line non-downloadable software.” The amended wording is unacceptably broad. Applicant must describe the function of the software and specify if it content or field specific. Applicant may adopt the following in Class 42, if accurate:

 

Class 42: “Providing meteorological information; Architectural design; Surveying; Geological surveys or research; Designing of machines, apparatus, instruments or systems composed of such machines, apparatus and instruments; Designing services for product packages, labels, leaflets and product inserts; Computer software design, computer programming, or maintenance of computer software; Technical advice relating to performance, operation, etcetera of computers, automobiles and other machines that require high levels of personal knowledge, skill or experience of the operators to meet the required accuracy in operating them; Testing, inspection or research of pharmaceuticals, cosmetics or foodstuff; Research on building construction or city planning; Testing or research on prevention of pollution; Testing or research on electricity; Testing or research on civil engineering; Testing, inspection or research on agriculture, livestock breeding or fisheries; Testing or research on machines, apparatus and instruments; Rental of measuring apparatus; Rental of computers; Providing on-line non-downloadable software {for use in, e.g., database management}{field or industry? E.g., pharmaceutical industry}; Rental of laboratory apparatus and instruments; Rental of drawing instruments; Providing information on donation of human corpses for medical research; Arranging of donation of human corpses for medical research”

 

Although identifications of goods and/or services may be amended to clarify or limit the goods and/or services, adding to or broadening the scope of the goods and/or services is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.  Therefore, applicant may not amend the identification to include goods and/or services that are not within the scope of the goods and/or services set forth in the present identification.

 

For assistance with identifying and classifying 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.  See TMEP §1402.04.

 

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

 

 

/Jordan A. Baker/

Trademark Examining Attorney

Law Office 102

571-272-8844

jordan.baker@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.