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: 10/22/2009

 

OPENING

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62, 2.65(a); TMEP §§711, 718.03.

 

The Office records have been searched and there are no similar registered or pending marks that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.

 

PLEASE NOTE: Applicant is encouraged to e-mail the trademark examining attorney to resolve the issues raised below at Bill.Dawe@uspto.gov.  Upon receipt of the e-mail accepting the amendments set forth below, the examining attorney will prepare and examiner’s amendment, enter the amendments into the databases and approve the application for publication.

INFORMALITIES

             Before the application can be considered further, the following informal issues must be addressed.

 

AMENDMENT TO COLOR LOCATION DESCRIPTION OF MARK REQUIRED

The mark description is incomplete because it does not reference all the literal or design elements in the mark and/or it does not reference all the colors in those elements.  A complete mark description for a mark depicted in color must identify all the literal and design elements in the mark and specify where the colors appear in those elements.  See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §§807.07(a) et seq.  If black, white and/or gray are not being claimed as a color feature of the mark, applicant must state that the colors black, white and/or gray represent background, outlining, shading and/or transparent areas and are not part of the mark.  TMEP §807.07(d). 

 

Therefore, applicant must provide a complete description of the mark.  See 37 C.F.R. §2.52(b)(1); TMEP §§807.07(a) et seq.  The following description is suggested, if accurate:  “The mark consists of the following:  (specify literal or design element on which the color appears, and continue to similarly list each element and the associated colors for each element in the mark, e.g., a red and blue bird on a green mountain) –

 

The mark consists of the words Arctic Fisheries within an oval shape. The word Arctic is in bold face type and is positioned above the word Fisheries which is in normal face type. The letters A and R in the word Arctic are colored red AND OUTLINED with white trim. The letter C is half red and half dark blue WITH THE RED PORTION OF THE LETTER OUTLINE IN white trim. The letters T, I and C are dark blue. The letters in the word Fisheries are all red. The INNER PORTION OF THE oval shape has both white and dark blue coloring in a "yin-yang" style with the BLUE SECTION APPEARS AS THE BACKGROUND FOR THE LETTERS “AR” and HALF OF THE LETTER “C” IN THE TERM ARCTIC AND THE WHITE SECTION APPEARS AS THE WHITE BACKGROUND COLOR FOR THE OTHER HALF OF THE LETTER “C” and the LETTERS “TIC” IN THE TERM ARCTIC; THE “YING-YANG” design is encompassed by a DARK BLUE OVAL WHICH CONTAINS THE WORDING “HONEST FISH FOR AN HONEST PRICE”  ON THE TOP AND THE WORDING “LIFE IS TOO SHORT TO EAT BAD FISH” ON THE BOTTOM; There is a light blue trim IMMEDIATELY BELOW THE WHITE PORTION OF THE “YING-YANG” design;  there is a white streak going across the top of the “YING-YANG” DESIGN which intersects with the top of the letter A in the word Arctic; AND there are white streaks on the left and right sides of the DARK BLUE PORTION OF THE oval which run between THE WORDS “LIFE” and “HONEST” and BETWEEN THE WORDS “PRICE” and “FISH”

REQUEST FOR INFORMATION – DESCRIPTIVENESS OF TERMS IN MARK

To permit proper examination of the application, applicant must submit additional product information about the goods.  See 37 C.F.R. §2.61(b); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701-02 (TTAB 2003); TMEP §814.  The requested product information should include fact sheets, instruction manuals, and/or advertisements.  If these materials are unavailable, applicant should submit similar documentation for goods of the same type, explaining how its own product will differ.  If the goods feature new technology and no competing goods are available, applicant must provide a detailed description of the goods.

 

The submitted factual information must make clear how the goods operate, their salient features, and their prospective customers and channels of trade.  Conclusory statements regarding the goods will not satisfy this requirement.

 

Failure to respond to a request for information is an additional ground for refusing registration.  See In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI, 67 USPQ2d at 1701-02.  Merely stating that information about the goods is available on applicant’s website is an inappropriate response to a request for additional information and is insufficient to make the relevant information of record.  See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).

GENERAL INQUIRY

 

               Applicant must specify whether “ARCTIC” has any significance in the trade or industry or any geographical significance.  37 C.F.R. §2.61(b).

DISCLAIMER

Applicant must disclaim the descriptive wording “ARCTIC FISHERIES” apart from the mark as shown  because the term ARCTIC refers to an ocean and the term FISHERIES merely describes an area of water where fish are caught so they can be sold.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).

 

A “disclaimer” is a statement in the record that an applicant does not claim exclusive rights to an unregistrable component of a mark; it does not affect the appearance of the mark.  TMEP §1213.  An unregistrable component can include wording or designs that are merely descriptive or generic, deceptively misdescriptive, or primarily geographically descriptive of an applicant’s goods and/or services.  15 U.S.C. §1052(e); see TMEP §§1213, 1213.03.

 

The Office can require an applicant to disclaim an unregistrable component of a mark.  15 U.S.C. §1056(a).  Failure to comply with a disclaimer requirement can result in a refusal to register the entire mark.  TMEP §1213.01(b).

 

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 “ARCTIC FISHERIES” apart from the mark as shown.

 

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

 

CLOSING

 

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

 

 

 

 

/William H. Dawe, III/

Trademark Attorney

Law Office 108

(571) 272-9337 voice

(571) 273-9337 fax

 

 

RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.uspto.gov/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.