UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION REGARDING REFERENCED TRADEMARK APPLICATION

 

 

OFFICE ACTION

 

STRICT DEADLINE—TO AVOID ABANDONMENT OF THIS TRADEMARK APPLICATION, THE USPTO MUST RECEIVE A COMPLETE RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE DATE.

 

ISSUE/MAILING DATE: 1/28/2011

 

REEXAMINATION

 

In consideration of Applicant’s Statement of Use (“SOU”), dated and filed December 14, 2010, the specimens and specimen description contained therein, and the record hereof, the undersigned examining attorney has reexamined the above-referenced application, in accordance with section 2.61 of the Trademark Rules of Practice, 37 C.F.R. § 2.61 (2010), and has determined the following:

REGISTRATION REFUSED—FAILURE TO FUNCTION AS TRADEMARK

Applicant has applied for federal protection to use the letter designation “MSR,” depicted with a standard character claim, on firearms.

Registration is refused, pursuant to Sections 1, 2 and 45 of the Trademark Act, 15 U.S.C. §§ 1051‑1052, 1127 (2006), on the ground that the applied-for mark, as used on the specimens of record, is merely a product model designation and does not function as a trademark to identify and distinguish Applicant’s goods from those of others and to indicate the source of the identified goods.  See, e.g., In re Dana Corp., 12 U.S.P.Q.2d 1748 (TTAB 1989); see TMEP § 1202.10.  Under Sections 1(d) and 45 of the Trademark Act and Rule 2.56, an acceptable specimen showing actual use in connection with “those goods or services identified in the notice of allowance” is required in order for the mark to be registered by this Office.  37 C.F.R. § 2.88(i)(1); see 15 U.S.C. §§ 1051(d), 1152, 1127; 37 C.F.R. §§ 2.56, 2.88(b)(2); TMEP §§ 904, 904.07(b), 1109.09(b).

“The question whether the subject matter of an application for registration functions as a mark is determined by examining the specimens along with any other relevant material submitted by applicant during prosecution of the application.”  In re Signal Cos., Inc., 228 U.S.P.Q. 956, 957 (TTAB 1986).  “It is well settled that terms used merely as model, style or grade designations are not registrable as trademarks because they do not serve to identify and distinguish one party’s goods from similar goods manufactured and/or sold by others.”  Dana Corp., 12 U.S.P.Q.2d at 1749.  Such matter generally serves only to describe the particular product in terms of its quality, size or type, and does not serve to identify the source of the goods.  Id. 

In the instant case, a Notice of Allowance issued on June 15, 2010, requiring Applicant to demonstrate use of the proposed mark in commerce on the listed International Class 13 goods, specifically, “firearms,” packaging, or as part of a point‑of‑sale display.  In its SOU, Applicant submitted the date of May 31, 2010, as the date it first used the asserted mark and the date of first use of the asserted mark in commerce in connection with the identified goods. 

In support of trademark use, Applicant has submitted two JPEG images, which it describes as “digital images showing use of mark on a label and on the goods.”  The first specimen image demonstrates the mark on a label, in the following manner:

MSR RH 338 LM 27” 5x5rd

BOLT ACTION CENTERFIRE RIFLE

27” BARREL

 

The second specimen image displays a section of a firearm, with the mark appearing as follows:

REMINGTON

MSR00032                              MODEL MSR                        PAT. PENDING                   

 

Based on examination, the nature and manner of use of the proposed mark on both specimens functions only to designate a particular product model, and thus is devoid of trademark significance to the general public.  On the first specimen image, the proposed mark is not prominent and not separable from the rest of the product information.  On the second specimen image, the proposed mark is only used as the model designation.  Subject matter used solely as a model, style or grade designation within a product line does not function as a trademark.  TMEP § 1202.10.  Consequently, the proposed mark, as it appears on the specimens of record, fails to act as a trademark, and registration is therefore refused. 

Therefore, Applicant may respond to this refusal by satisfying one of the following:

(1)        Submit a substitute specimen showing proper trademark use on the identified goods in the statement of use, and a statement that said substitute specimen was in use in commerce before the expiration of the deadline for filing the statement of use, verified with an affidavit or a signed declaration under 37 C.F.R. § 2.20.  37 C.F.R. §§ 2.56, 2.59(b)(2); see 37 C.F.R. § 2.193(e)(1), TMEP § 904.05;

(2)        Claim acquired distinctiveness, under Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f), by submitting evidence that the proposed mark has become distinctive of Applicant’s goods in commerce.  Evidence may consist of examples of advertising and promotional materials that specifically promote the subject matter for which registration is sought as a mark, dollar figures for advertising devoted to such promotion, dealer and consumer statements of recognition of the subject matter as a mark and any other evidence that establishes recognition of the matter as a mark for the goods.  37 C.F.R. § 2.41(a); see TMEP §§ 1202.03(d), 1212.06; or

(3)        Amend the application to seek registration on the Supplemental Register, pursuant to Section 23 of the Trademark Act.  15 U.S.C. § 1091; 37 C.F.R. §§ 2.47, 2.75(a); TMEP §§ 801.02(b), 815–816. 

If submitting a substitute specimen requires an amendment to the dates of use, Applicant must also verify the amended dates.  37 C.F.R. § 2.71(c); TMEP § 904.05.

Applicant is strongly urged to submit the specimens electronically.  If Applicant submits an online response, please note that the specimens must be digitized images submitted in JPEG or PDF formats.  37 C.F.R. § 2.56(d)(4); TMEP § 904.02.

Examples of specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the goods or packaging, or displays associated with the goods at their point of sale.  TMEP § 904.03.

Applicant may not withdraw the statement of use.  37 C.F.R. § 2.88(g); TMEP § 1109.17.

Applicant must respond timely and completely to the issues raised in this Office Action.  15 U.S.C. § 1062(b); 37 C.F.R. §§ 2.62, 2.65(a); TMEP §§ 711, 718.03.

Please contact the undersigned attorney with any questions. 

 

Sincerely,

/Judy Helfman/

Judith M. Helfman

Attorney at Law

USPTO - Trademarks

Law Office 114

(571) 272-5892 direct line

 

TO RESPOND TO THIS LETTER:  Use the Trademark Electronic Application System (TEAS) response form at http://teasroa.gov.uspto.report/roa/.  Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application.  For technical assistance with online forms, 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.

 

WHO MUST SIGN THE RESPONSE:  Any response must be personally signed by (1) an individual applicant; (2) someone with legal authority to bind applicant (e.g., a corporate officer, a general partner, all joint applicants); or (3) an authorized attorney, if one is appointed to represent applicant. 

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/.  Please keep a copy of the complete TARR screen.  If TARR shows no change for more than six months, call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/teas/eTEASpageE.htm.

 

 

 

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION HAS ISSUED ON 1/28/2011 FOR

SERIAL NO. 77826894

 

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

 

 

TO READ OFFICE ACTION: Click on this link or go to http://portal.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 e-mail notification.

 

RESPONSE IS REQUIRED: You should carefully review the Office action to determine (1) how to respond; and (2) the applicable response time period. Your response deadline will be calculated from 1/28/2011 (or sooner if specified in the office action).

 

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.

 

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

 

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