Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. 

 

 

Serial Number  78/164907

 

The assigned examining attorney has reviewed the referenced application and determined the following.

 

Search Results

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. §1052(d).  TMEP §704.02.

 

Refusal – Proposed Mark is Merely Descriptive of the Goods

The examining attorney refuses registration on the Principal Register because the proposed mark merely describes the goods.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §§1209 et seq.

 

A mark is merely descriptive under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1), if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant goods.  In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987);  In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re MetPath Inc., 223 USPQ 88 (TTAB 1984); In re Bright‑Crest, Ltd., 204 USPQ 591 (TTAB 1979); TMEP §1209.01(b).

 

The examining attorney must consider whether a mark is merely descriptive in relation to the identified goods, not in the abstract.  In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (C.C.P.A. 1978); In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985); In re American Greetings Corp., 226 USPQ 365 (TTAB 1985).  TMEP §1209.01(b). 

 

The proposed mark is KLIP for news and information packets in electronic format.

 

If a term is merely descriptive, a novel spelling of the term is also merely descriptive if purchasers would perceive the different spelling as the equivalent of the descriptive term.  Clarke v. K‑Mart, 473 F. Supp. 1299, 205 USPQ 1237 (W.D. Pa. 1980); In re State Chemical Mfg. Co., 225 USPQ 687 (TTAB 1985); In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982).  TMEP §1209.03(j).  KLIP is a novel spelling of the word CLIP.  Consumers will perceive KLIP to be the equivalent of the word CLIP.

 

CLIP is defined as:

noun

1.    The act of clipping.

2.    Something clipped off, especially:. a. The wool shorn at one shearing, as of sheep. b. A season's shearing.

3.    A short extract from a film or videotape.

4.    Informal. A quick, sharp blow: a clip on the ear.

5.    Informal. A pace or rate: go at a fast clip.

6.    A single occasion; a time: could write nine pages at a clip.

7.    clips. A pair of shears or clippers.[1]

 

The proposed mark KLIP is merely descriptive of the goods, which feature a news clip.

 

Amendment to Supplemental Register Suggested After Either (1) Amendment to Allege Use if Filed or (2) Section 1(b) is Deleted

Please note that the mark in an application under Trademark Act Section 1(b), 15 U.S.C. Section 1051(b), is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use under 37 C.F.R. Section 2.76 or statement of use under 37 C.F.R. Section 2.88 has been timely filed.  37 C.F.R. Section 2.47(c); TMEP section 1105.01(a)(vii). When such an application is changed from the Principal Register to the Supplemental Register, the effective filing date of the application is the date of filing of the allegation of use.  37 C.F.R. Section 2.75(b); TMEP section 708.01.

 

Only applications under Trademark Act §44, 15 U.S.C. §1126, are excepted from the use requirement in seeking registration on the Supplemental Register.  15 U.S.C. §1126(e).  Therefore, in the alternative, the applicant may amend to the Supplemental Register after it deletes section 1(b).

 

Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

 

If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informalities.

 

Identification and/or Classification of Goods

The identification of goods is unacceptable as indefinite and/or misclassified.  The indefinite and/or misclassified items are listed below, followed by the changes needed.

 

“information packets” – indefinite – must specify the type of information, for example, current events news information

 

“in electronic format” – indefinite – must specify whether “recorded on computer media,” or “downloadable,” both of which are in Class 9, or “providing online,” which is in Class 41.

 

SUGGESTED IDENTIFICATION OF GOODS AND SERVICES

The applicant may adopt the following identification, if accurate: 

 

Electronic publications, namely, packets featuring news and current events information, both downloadable and recorded on computer media, in Class 9; and

 

Providing online news and current events information, in Class 41.

 

TMEP §1402.01.

 

Advisory Notice – Additions to Identification of Goods and Services are Not Permitted

Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. Section 2.71(a); TMEP section 804.09.  Therefore, the applicant may not amend to include any goods or services that are not within the scope of the goods and services recited in the present identification.

 

Requirements for Multiple Class Applications

The applicant has paid the filing fee for one class.  However, the applicant’s goods and services may fall into two classes, as noted above.

 

If the applicant prosecutes this application as a combined, or multiple‑class, application based on use in commerce under Trademark Act Section 1(a), 15 U.S.C. §1051(a), the applicant must comply with each of the following:

 

(1)  The applicant must specifically identify the goods and services in each class and list the goods and services by international class with the classes listed in ascending numerical order.  TMEP §1403.01.

 

(2)  The applicant must submit a filing fee for each international class of goods/services not covered by the fee already paid.  37 C.F.R. §§2.6(a)(1) and 2.86(b); TMEP §§810.01 and 1403.01.  Effective January 1, 2003, the fee for filing a trademark application is $335 for each class.  This applies to classes added to pending applications as well as to new applications filed on or after that date.  

 

(3)  The applicant must submit: 

 

(a) dates of first use and first use in commerce and one specimen for each class that includes goods or services based on use in commerce under Trademark Act Section 1(a).  The dates of use must be at least as early as the filing date of this application, 37 C.F.R. §§2.34(a)(1) and 2.86(a), and the specimen(s) must have been in use in commerce at least as early as the filing date of the application, and/or

 

(b) a statement of a bona fide intention to use the mark in commerce on or in connection with all the goods or services specified in each class that includes goods or services based on a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), where such statement was not included for the goods or services in the original application.

 

(4)  The applicant must submit an affidavit or a declaration under 37 C.F.R. §2.20 signed by the applicant to verify (3) above.  37 C.F.R. §§2.59(a) and 2.71(c).

 

Meaning of the Mark; Request for Information

 

(1)        In order to allow for proper examination of this application, including the final determination as to whether the mark is merely descriptive in relation to the goods or services, the applicant must submit samples of advertisements or promotional materials for the goods or services or, if unavailable, for goods or services of the same type.  If such materials on the specific goods/services described in the application are not available, the applicant must describe the nature, purpose, prospective purchasers, and channels of trade of the goods or services identified in the application.

 

This information is necessary to evaluate accurately and fully the registrability of the applicant’s proposed designation. 37 C.F.R. Section 2.61(b); TMEP sections 1103.04 and 1105.02.  If the applicant does not provide the information required herein, registration may be refused.  The Trademark Rules of Practice have the effect of law and failure to comply with a request for information is grounds for refusal of registration.  See, e.g., In re Joseph Edward Page, 1999 TTAB LEXIS 229 (TTAB 1999); In re Babies Beat, Inc., 13 USPQ2d 1729 (TTAB 1990); In re Big Daddy's Lounges, Inc., 200 USPQ 371 (TTAB 1978); In re Air Products and Chemicals, Inc., 192 USPQ2d 84, 85-86 (TTAB 1976); and In re Morrison Industries, Inc., 178 USPQ 432, 433-34 (TTAB 1973).   

 

(2)        In addition, the applicant must indicate whether the term “CLIP” has any significance in the relevant trade or industry or as applied to the goods or services.  37 C.F.R. Section 2.61(b). 

 

Application Pursuant to Sections 1(b) and 44(d) – Applicant May Rely Solely on Intent to Use

The applicant has filed asserting a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), 15 U.S.C. §1051(b), and claiming priority under Section 44(d), 15 U.S.C. §1126(d), based on a foreign application.  Under these circumstances, the applicant may rely solely on its intent to use the mark in commerce as the basis for registration and not the expected foreign registration, and still claim the benefit of the priority filing date.  If the applicant chooses to do so, this Office will approve the case for publication without waiting for the applicant to submit the foreign registration.  Of course, the application must be in condition for publication in all other respects.  Moreover, while the application may be approved for publication, the mark will not be registered until an acceptable allegation of use has been filed.

 

If the applicant wishes to proceed relying on the applicant’s intent to use the mark in commerce as the sole basis for registration, with the claim of priority, the applicant should so advise the examining attorney.  TMEP §§806.02(f) and 806.04(b).

 

If the applicant does not so indicate, this Office will presume that the applicant wishes to rely on the foreign registration as an additional basis for registration and will expect the applicant to submit a true copy, a photocopy, a certification, or a certified copy of the foreign registration and, if appropriate, an English translation.  It is customary for the translator to sign the translation.  TMEP §§1004.01 and 1004.01(b).

 

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

 

 

 

 

/Ellen Awrich/

Trademark Attorney

Law Office 116

ph (703)306-7910

fx (703)746-8116

ecom116@uspto.gov

 

 

How to respond to this Office Action:

 

To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.

 

To respond formally via E-mail, visit http://www.gov.uspto.report/web/trademarks/tmelecresp.htm and follow the instructions.

 

To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.

 

To check the status of your application at any time, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.gov.uspto.report/

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.