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: 9/25/2009

 

 

Upon further consideration of the application, the examining attorney has determined the following.  The examining attorney apologizes for not raising these issues in the previous action(s).

 

 

Deceptiveness Refusal as to Class 16

 

Registration is refused as to Class 16 because the applied-for mark consists of or includes deceptive matter in relation to the identified goods and/or services.  Trademark Act Section 2(a), 15 U.S.C. §1052(a); see In re Budge Mfg. Co., 857 F.2d 773, 8 USPQ2d 1259 (Fed. Cir. 1988); In re ALP of S. Beach Inc., 79 USPQ2d 1009 (TTAB 2006); TMEP §1203.02.

 

A mark is deceptive if the following criteria are met:

 

(1)        The applied-for mark consists of or contains a term that misdescribes the character, quality, function, composition, or use of the goods and/or services;

 

(2)        Prospective purchasers are likely to believe that the misdescription actually describes the goods and/or services; and

 

(3)        The misdescription is likely to affect a significant portion of the relevant consumers’ decision to purchase the goods and/or services.

 

See In re Budge, 857 F.2d at 775, 8 USPQ2d at 1260; In re ALP of S. Beach Inc., 79 USPQ2d at 1010; TMEP §1203.02; see also In re Spirits Int’l, N.V., 563 F.3d 1347, 1353, 1356, 90 USPQ2d 1489, 1492-93, 1495 (Fed. Cir. 2009) (holding that the test for materiality incorporates a requirement that a “significant portion of the relevant consumers be deceived”).

 

In this case, the applied-for mark contains the wording “green”; this misdescribes applicant’s goods because the applicant’s Class 16 goods are not limited to green or environmentally friendly products only; rather, the applicant’s are so broad that they could include goods that are not “green” or environmentally friendly.  Consumers are likely to believe this misdescription, and it will likely affect a significant portion of the relevant consumers’ decision to purchase the goods and/or services because green goods are thought to be less harmful to the environment and to emit fewer toxins and/or fumes than their non-green counterparts.  Also, because of these benefits, people are willing to pay more money for green goods versus their non-green counterparts.  (See the attachments from the Internet.) 

 

If this wording does not actually describe a feature or characteristic of the goods, the applied-for mark will deceive the public as to an important factor in its purchasing decision.  See TMEP §1203.02.  If this wording does describe a feature or characteristic of the goods and/or services, applicant can amend the identification of goods and/or services to state this fact, and the refusal will be withdrawn.  Applicant may adopt the identification suggested below in the identification section.  (See below).

 

 

 

Disclaimer as to Class 16

 

The term “green” refers to environmentally friendly printed and paper goods.  (See the attachments from the Internet.)  Therefore, the term “green” in the proposed mark merely describes the applicant’s Class 16 goods and must be disclaimed.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).

 

The following is the accepted standard format for a disclaimer:

 

No claim is made to the exclusive right to use “green” apart from the mark as shown, as to Class 16.

 

TMEP §1213.08(a)(i).

 

 

 

Identification of Goods

 

The field or subject matter contained on the CDs and DVDs is unclear because the applicant failed to specify the type of “spoken commentary” and “educational content.”    The term “paper” is vague because the application failed to specify the type (i.e., bond paper, copy paper, etc.).  See TMEP §1402.01.  The language “name cards” is vague because the applicant failed to specify whether these were paper or of another composition.   Applicant must amend the identification to specify the common commercial name of the goods.  If there is no common commercial name, applicant must describe the product and its intended uses.  See id.

The applicant may adopt the following identification, if accurate:

Class 9:  Interactive video game and computer game programs; pre-recorded CDs and DVDs featuring music, spoken commentary in the field of children’s stories, animation, children’s educational content, and information in the field of general interest for children and youth, excluding content related to religious topics; backpacks and bags especially adapted for holding laptops and notebook computers;

Class 16:  environmentally friendly notebooks, sticker and photo albums; environmentally friendly blank and lined writing journals, school supplies namely, writing instruments, pens, pencils, mechanical pencils, erasers, markers, crayons, highlighting markers, folders, notebooks, paper [specify type, i.e., copy paper, bond paper, etc.], writing grips, book marks, greeting and correspondence cards, note cards, business cards and paper name cards, and wrapping paper; environmentally friendly children's books, comic books, posters and daily planners; environmentally friendly toy and game cardboard and paper packaging, posters and art prints; environmentally friendly iron-on decals and temporary tattoos.

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.

 

Response to Office Action

 

There is no required format or form for responding to an Office action.  The Office recommends applicants use the Trademark Electronic Application System (TEAS) to respond to Office actions online at http://www.gov.uspto.report/teas/index.html.  If applicant responds on paper via regular mail, the response should include the title “Response to Office Action” and the following information:  (1) the name and law office number of the examining attorney, (2) the serial number and filing date of the application, (3) the date of issuance of this Office action, (4) applicant’s name, address, telephone number and e-mail address (if applicable), and (5) the mark.  37 C.F.R. §2.194(b)(1); TMEP §302.03(a).

 

In the response, applicant should explicitly address each refusal and/or requirement raised in the Office action.  If a refusal has issued, applicant may wish to argue against the refusal, i.e., submit arguments and/or evidence as to why the refusal should be withdrawn and why the mark should register.  To respond to requirements, applicant should set forth in writing the required changes or statements. 

 

The response must be signed by applicant or someone with legal authority to bind applicant (i.e., a corporate officer of a corporate applicant, the equivalent of an officer for unincorporated organizations or limited liability company applicants, a general partner of a partnership applicant, each applicant for applications with multiple individual applicants).  TMEP §§605.02, 712.  The signer must personally sign and date the response or manually enter their electronic signature in the signature block.  TMEP §605.02

 

 

The Trademark Applications and Registrations Retrieval (TARR) database on the USPTO website at http://tarr.uspto.gov provides detailed, up to the minute information about the status and prosecution history of trademark/service mark applications and registrations.  To access the TARR database, applicant will need to provide an application serial number or registration number.  The TARR database is available 24 hours a day, 7 days a week.    The applicant may also call the Trademark Assistance Center with general questions at (571) 272-9250.

 

 

 

/Laurie Mayes/

Trademark Examining Attorney

Law Office 101

571-272-5874

FAX 571-273-9101

 

 

 

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.

 

 

 

 

 

                                                                

IMPORTANT NOTICE REGARDING YOUR TRADEMARK APPLICATION

 

Your trademark application (Serial No. 77558461) has been reviewed.   The examining attorney assigned by the United States Patent and Trademark Office (“USPTO”) has written a letter (an “Office action”) on 9/25/2009 to which you must respond (unless the Office letter specifically states that no response is required).  Please follow these steps:

 

1. Read the Office letter by clicking on this link http://tmportal.gov.uspto.report/external/portal/tow?DDA=Y&serial_number=77558461&doc_type=OOA&mail_date=20090925 OR go to  http://tmportal.gov.uspto.report/external/portal/tow and enter your serial number to access the Office letter.  If you have difficulty accessing the Office letter, contact TDR@uspto.gov.  

                                         

PLEASE NOTE: The Office letter may not be immediately available but will be viewable within 24 hours of this e-mail notification.

 

2. Contact the examining attorney who reviewed your application if you have any questions about the content of the Office letter (contact information appears at the end thereof).

 

3. Respond within 6 months, calculated from 9/25/2009 (or sooner if specified in the Office letter), using the Trademark Electronic Application System (TEAS) Response to Office Action form. If you have difficulty using TEAS, contact TEAS@uspto.gov. 

 

ALERT:

 

Failure to file any required response by the applicable deadline will result in the ABANDONMENT (loss) of your application.

 

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.