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: 10/8/2009

 

 

TEAS PLUS APPLICANTS MUST SUBMIT DOCUMENTS ELECTRONICALLY OR SUBMIT FEE:  Applicants who filed their application online using the reduced-fee TEAS Plus application must submit certain documents electronically.  In addition, such applicants must accept correspondence from the Office via e-mail throughout the examination process and maintain a valid e-mail address.  37 C.F.R. §§2.23(a), (b); TMEP §§819, 819.02(a), (b).  Failure to do so will incur an additional fee of $50 per class of goods and/or services.  37 C.F.R. §2.6(a)(1)(iv); TMEP §819.04.

 

Therefore, applicant must submit the following documents using the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html:  (1) responses to Office actions; (2) preliminary amendments; (3) changes of correspondence address; (4) changes of owner’s address; (5) appointments and revocations of power of attorney; (6) appointments and revocations of domestic representative; (7) amendments to allege use; (8) statements of use; (9) requests for extension of time to file a statement of use; and (10) requests to delete a Trademark Act Section 1(b) basis.  If applicant files any of these documents on paper instead of via TEAS, then applicant must also submit the $50 per class fee.  37 C.F.R. §§2.6(a)(1)(iv), 2.23(a)(1); TMEP §§819.02(b), 819.04.  Telephone responses that result in the issuance of an examiner’s amendment will not incur this additional fee. 

 

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(a), 2.65(a); TMEP §§711, 718.03.

 

SEARCH OF OFFICE’S DATABASE OF MARKS

 

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

SECTION 2(e)(1) REFUSAL – MERELY DESCRIPTIVE

The applicant seeks registration for the stylized mark “Egg and Spoon Race” for action skill games and party games in international class 028.

 

Registration is refused because the applied-for mark merely describes function of applicant’s goods.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

 

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods and/or services.  TMEP §1209.01(b); see In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005); In re Gyulay, 820 F.2d 1216, 1217-18, 3 USPQ2d 1009, 1010 (Fed. Cir. 1987).  Moreover, a mark that identifies a group of users to whom an applicant directs its goods and/or services is also merely descriptive.  TMEP §1209.03(i); see In re Planalytics, Inc., 70 USPQ2d 1453, 1454 (TTAB 2004).

 

The determination of whether a mark is merely descriptive is considered in relation to the identified goods and/or services, not in the abstract.  In re Abcor Dev. Corp., 588 F.2d 811, 814, 200 USPQ 215, 218 (C.C.P.A. 1978); TMEP §1209.01(b); see, e.g., In re Polo Int’l Inc., 51 USPQ2d 1061 (TTAB 1999) (finding DOC in DOC-CONTROL would be understood to refer to the “documents” managed by applicant’s software, not “doctor” as shown in dictionary definition); In re Digital Research Inc., 4 USPQ2d 1242 (TTAB 1987) (finding CONCURRENT PC-DOS merely descriptive of “computer programs recorded on disk” where relevant trade used the denomination “concurrent” as a descriptor of a particular type of operating system).  “Whether consumers could guess what the product is from consideration of the mark alone is not the test.”  In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).

 

A mark that merely combines descriptive words is not registrable if the individual components retain their descriptive meaning in relation to the goods and/or services and the combination results in a composite mark that is itself descriptive.  TMEP §1209.03(d); see, e.g., In re King Koil Licensing Co. Inc., 79 USPQ2d 1048 (TTAB 2006) (holding THE BREATHABLE MATTRESS merely descriptive of “beds, mattresses, box springs and pillows”); In re Associated Theatre Clubs Co., 9 USPQ2d 1660, 1662 (TTAB 1988) (holding GROUP SALES BOX OFFICE merely descriptive of theater ticket sales services).  Such a mark is registrable only if the composite creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the goods and/or services.  See, e.g., In re Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968).

 

In this case, both the individual components and the composite result are descriptive of applicant’s goods and do not create a unique, incongruous or nondescriptive meaning in relation to the goods and/or services.  Specifically, the “egg and spoon race” refers to an already established outdoor game whereby participants race across a finish line while balancing an egg on spoon.  When consumers read the applicant’s mark they will not only know the purpose of the applicant’s game but also the appearance of the applicant’s actual product.  Consumer will know that the applicant’s game consist of an egg and a spoon. Please see the attached articles regarding the “egg and spoon race”. [1]

 

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 (TTAB 2002) (Internet evidence accepted by the Board to show descriptiveness); TBMP §1208.03; TMEP §710.01(b).  Evidence from the online Wikipedia® encyclopedia can be considered if the non-offering party has an opportunity to rebut such evidence.  In re IP Carrier Consulting Group, 84 USPQ2d 1028 (TTAB 2007); TMEP §710.01(b). 

 

Consequently, registration is thus refused under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

 

SUPPLEMENTAL REGISTER

 

The applied-for mark has been refused registration on the Principal Register.  Applicant may respond to the refusal by submitting evidence and arguments in support of registration and/or by amending the application to seek registration on the Supplemental Register.  See 15 U.S.C. §1091; 37 C.F.R. §§2.47, 2.75(a); TMEP §§801.02(b), 816.  Amending to the Supplemental Register does not preclude applicant from submitting evidence and arguments against the refusal(s).

 

Although registration on the Supplemental Register does not afford all the benefits of registration on the Principal Register, it does provide the following advantages:

                               

• The registrant may use the registration symbol ®;
• The registration is protected against registration of a confusingly similar mark under Trademark Act Section 2(d);
• The registrant may bring suit for infringement in federal court; and
• The registration may serve as the basis for a filing in a foreign country under the Paris Convention and other international agreements.

 

See 15 U.S.C. §§1052(d), 1091, 1094; TMEP §815.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusals by submitting evidence and arguments in support of registration.

 

RESPONSE TO OFFICE ACTION

 

To expedite prosecution of the application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/teas/index.html.  If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/teas/eFilingTips.htm and email technical questions to TEAS@uspto.gov.

 

 

 

 

/R.M.Herrera/

Roselle M. Herrera

Trademark Examining Attorney

Law Office 102

P: (571) 272-1909

F: (571) 273-1909

 

 

 

 

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.