UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

EXAMINER’S AMENDMENT/PRIORITY 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: 12/24/2008

 

EXAMINER'S AMENDMENT

 

OFFICE SEARCH:  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.   

 

AMENDMENT: In accordance with the authorization granted by Susan J. Hightower, Esq., on December 24, 2008, the application has been AMENDED as indicated below.  Please advise the undersigned immediately if there is an objection to the amendment.  Otherwise, no response is necessary. TMEP §707.

 

Mark Description

 

The following description of the mark is added to the record:

 

The mark consists of a rectangle divided into two parts.  The left part of the rectangle contains the wording “MARCH FORTH.  TAKE THE DAY OFF TO TAKE THE DAY ON.”  The right part of the rectangle contains the number 4 with the word MARCH embedded in the vertical stem of the number.

 

See 37 C.F.R. §2.37; TMEP §§808 et seq.

 

If the identification of goods or services has been amended, please note that any future amendments must be in accordance with 37 C.F.R. 2.71(a); TMEP section 1402.07(e). 

PRIORITY ACTION

 

The following issue was discussed with the person listed above.

 

Disclaimer Required

 

Applicant has applied for registration of a design mark containing the wording MARCH FORTH. TAKE THE DAY OFF TO TAKE THE DAY ON next to a number 4 with the word MARCH in the vertical stem for:

 

Promoting and encouraging volunteerism in the fields of education, energy and climate change, global health, and poverty alleviation, in Class 35.

 

The Office can require an applicant to disclaim an unregistrable part of a mark consisting of particular wording, symbols, numbers, design elements or combinations thereof.  15 U.S.C. §1056(a).  Under Trademark Act Section 2(e), the Office can refuse registration of an entire mark if the entire mark is merely descriptive, deceptively misdescriptive, or primarily geographically descriptive of the goods.  15 U.S.C. §1052(e).  Thus, the Office may require an applicant to disclaim a portion of a mark that, when used in connection with the goods or services, is merely descriptive, deceptively misdescriptive, primarily geographically descriptive, or otherwise unregistrable (e.g., generic).  See TMEP §§1213, 1213.03. 

 

Failure to comply with a disclaimer requirement can result in a refusal to register the entire mark.  TMEP §1213.01(b).

 

A “disclaimer” is a statement that applicant does not claim exclusive rights to an unregistrable component of a mark.  TMEP§1213.  A disclaimer does not affect the appearance of the applied-for mark.  See TMEP§1213.10. 

 

Applicant must disclaim the descriptive wording “MARCH 4” apart from the mark as shown because it merely describes a characteristic of applicant’s services, namely, the date on which they are primarily offered.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).

 

A term is merely descriptive under Section 2(e)(1) if it conveys an immediate idea of the ingredients, qualities, or characteristics of the identified goods and/or services.  See In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1422 (Fed. Cir. 2005); In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1346, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001).

 

The word “March” is defined as “in the Gregorian calendar, the third month of the year, lasting 31 days.”  The word “four” is defined as “the fourth in a set or series.”  See the attached definitions from the on-line Encarta® World English Dictionary, http://encarta.msn.com/encnet/features/dictionary/dictionaryhome.aspx and Merriam-Webster’s Online Dictionary, http://www.merriam-webster.com/.  The number 4 combined with the term March merely describes the fourth day in the month of March.

 

Information on applicant’s web site states that:  “We have designated March 4th as a day of celebration throughout all Gevity offices nationwide.  It’s a day to celebrate the amazing potential within each colleague—and to recognize your strengths, vision, and unlimited possibilities.”  See the attached printout from http://www.marchforth.info/MarchForth_Highlights.pdf.  Therefore, the wording March 4 in the mark simply describes a particular date on which applicant engages in its promotional services.  Consequently, the wording in the mark merely describes this characteristic of applicant’s services.

 

See also the attached printouts from fifteen websites and fifteen articles from the LEXISNEXIS® database showing the wording “March 4” used descriptively for a particular date.  See the attached web pages from:

http://en.wikipedia.org/wiki/March_4

http://www.answers.com/topic/march-4-1

http://memory.loc.gov/ammem/today/mar04.html

http://www.msnbc.msn.com/id/23134849/

http://www.sos.state.tx.us/elections/candidates/runpres07.shtml

http://www.federalreserve.gov/newsevents/speech/bernanke20080304a.htm

http://drupal.org/node/321768

http://georgiainfo.galileo.usg.edu/tdgh-mar/mar04.htm

http://news.bbc.co.uk/onthisday/hi/dates/stories/march/4/default.stm

http://www.marketingpilgrim.com/2008/03/linky-goodness-march-4.html

http://news.harmony-central.com/Newp/2008/Fender-University-March-4-8-2009-for-Spring-Session.html

http://www.nytimes.com/2008/03/04/us/politics/04text-obama.html

http://www.signup4.net/Public/ap.aspx?EID=IMPL188E

http://www.mahalo.com/March_4_Primaries

http://www.asha.org/about/publications/leader-online/archives/2008/080304/

 

Material obtained from the Internet is generally accepted as competent evidence in examination and ex parte proceedings.  See In re Rodale Inc., 80 USPQ2d 1696, 1700 (TTAB 2006) (Internet evidence accepted by the Board to show genericness); In re White, 80 USPQ2d 1654, 1662 (TTAB 2006) (Internet evidence accepted by the Board to show false connection); In re Joint-Stock Co. “Baik”, 80 USPQ2d 1305, 1308-09 (TTAB 2006) (Internet evidence accepted by the Board to show geographic significance); Fram Trak Indus. v. WireTracks LLC, 77 USPQ2d 2000, 2006 (TTAB 2006) (Internet evidence accepted by the Board to show relatedness of goods); In re Consol. Specialty Rest. Inc., 71 USPQ2d 1921, 1927-29 (TTAB 2004) (Internet evidence accepted by the Board to show that geographic location is well-known for particular goods); In re Gregory, 70 USPQ2d 1792, 1793 (TTAB 2004) (Internet evidence accepted by the Board to show surname significance); In re Fitch IBCA Inc., 64 USPQ2d 1058, 1060 (Internet evidence accepted by the Board to show descriptiveness); TBMP §1208.03; TMEP §710.01(b). 

 

Material obtained from computerized text-search databases, such as LEXISNEXIS®, is generally accepted as competent evidence in examination and ex parte proceedings.  See In re Boulevard Entm’t Inc., 334 F.3d 1336, 1342-43, 67 USPQ2d 1475, 1479 (Fed. Cir. 2003) (LEXISNEXIS® evidence accepted by the Court to show the offensive nature of a term); In re Giger, 78 USPQ2d 1405, 1407 (TTAB 2006) (LEXISNEXIS® evidence accepted by the Board to show surname significance); In re Lamb-Weston Inc., 54 USPQ2d 1190, 1192 (TTAB 2000) (LEXISNEXIS® evidence accepted by the Board to show descriptiveness); In re Wada, 48 USPQ2d 1689, 1690 (TTAB 1998) (LEXISNEXIS® evidence accepted by the Board to show that geographic location is well-known for particular goods); In re Decombe, 9 USPQ2d 1812, 1815 (TTAB 1988) (LEXISNEXIS® evidence accepted by the Board to show relatedness of goods in a likelihood of confusion determination); TBMP §1208.01; TMEP §710.01(a). 

 

A disclaimer does not physically remove the disclaimed matter from the mark, but rather is a written statement that applicant does not claim exclusive rights to the disclaimed wording and/or design separate and apart from the mark as shown in the drawing.  TMEP §§1213, 1213.10.

 

The following cases further explain the disclaimer requirement:  Dena Corp. v. Belvedere Int’l Inc., 950 F.2d 1555, 21 USPQ2d 1047 (Fed. Cir. 1991); In re Brown-Forman Corp., 81 USPQ2d 1284 (TTAB 2006); In re Kraft, Inc., 218 USPQ 571 (TTAB 1983).

 

The computerized printing format for the Office’s Trademark Official Gazette requires a standardized format for a disclaimer.  TMEP §1213.08(a)(i).  The following is the standard format used by the Office:

 

No claim is made to the exclusive right to use “MARCH 4” apart from the mark as shown.

 

TMEP §1213.08(a)(i); see In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).

 

Response Guidelines

 

The issue raised above may potentially be resolved by telephone.  Applicant is encouraged to telephone the assigned trademark examining attorney to resolve the issue raised in this Office action.

 

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

 

 

 

 

/Kim T. Moninghoff/

Trademark Examining Attorney

Law Office 113

Phone:  571-272-4738

Fax: 571-273-9113

 

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

USPTO OFFICE ACTION HAS ISSUED ON 12/24/2008 FOR

APPLICATION SERIAL NO. 77574240

 

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

  

VIEW OFFICE ACTION: Click on this link http://tmportal.gov.uspto.report/external/portal/tow?DDA=Y&serial_number=77574240&doc_type=EAP&mail_date=20081224 (or copy and paste this URL into the address field of your browser), or visit http://tmportal.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 12/24/2008.

 

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.