To: | ZURN INDUSTRIES, INC. (lovrchek@erie.net) |
Subject: | TRADEMARK APPLICATION NO. 78186542 - FLO THRU - 260.096 (Zur |
Sent: | 5/13/03 2:24:40 PM |
Sent As: | ECom112 |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 78/186542
APPLICANT: ZURN INDUSTRIES, INC.
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CORRESPONDENT ADDRESS: WAYNE L LOVERCHECK LOVERCHECK & LOVERCHECK PC 931 STATE ST ERIE PA USA 16501-1451
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom112@uspto.gov
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MARK: FLO THRU
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CORRESPONDENT’S REFERENCE/DOCKET NO: 260.096 (Zur
CORRESPONDENT EMAIL ADDRESS: lovrchek@erie.net |
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 78/186542
The assigned examining attorney has reviewed the referenced application and determined the following.
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.
Section 2(e)(1) - Descriptive Refusal
However, 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). It is not necessary that a term describe all of the purposes, functions, characteristics or features of the goods/services to be merely descriptive. It is enough if the term describes one attribute of the goods/services. In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973). TMEP §1209.01(b).
In this case, the applicant has applied to register FLO THRU for “trench drains comprising a fiber glass channel with a grate on top”. Thus, FLO THRU, which is a novel spelling of the words “flow through” merely describes a feature or characteristic of the identified goods which comprise trench drain products; in that the goods are designed to enable liquids to flow through other products and drain properly. The examining attorney refers to the excerpted articles from the examining attorney’s search in the NEXIS® computerized database in which “flow through” appeared with descriptive significances in dozens of stories about drains. See attachments. The Trademark Trial and Appeal Board has held that materials obtained through computerized text searching are competent evidence to show the descriptive use of terms under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1). In re National Data Corp., 222 USPQ 515, 517 n.3 (TTAB 1984).
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.
Classification
The applicant has classified the goods incorrectly. The applicant must amend the application to classify the goods in International Class 19. 37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b).
Claim of Ownership
In addition, if the applicant is the owner of Registration No. 1838496, the applicant must submit a claim of ownership. 37 C.F.R. §2.36; TMEP §812.
Advisory - Distinctiveness under Section 2(f)
Finally, please note, the applicant may seek registration under the Trademark Act Section 2(f), 15 U.S.C. §1052(f), by claiming acquired distinctiveness through ownership of U.S. Registration 1838496. To do so, the applicant must provide a statement that the mark has become distinctive of the goods/services as evidenced by ownership of U.S. Registration ^ on the Principal Register for the same mark for related goods or services. 37 C.F.R. §2.41(b); TMEP §§1212.04 et seq.
LEVEL 1 - 1 OF 8 STORIES
Copyright 2002 Globe Newspaper Company
The Boston Globe
March 10, 2002, Sunday ,THIRD EDITION
SECTION: GLOBE SOUTH; Pg. 1
LENGTH: 998 words
HEADLINE: GLOBE SOUTH 1 / PLYMOUTH;
NATURE RECLAIMING WATERFRONT PARK
BYLINE: By Robert Knox, Globe correspondent
BODY:
... areas, raise the banks of the brook, and install new drainage pipes along
the bank and to the pool by the Pilgrim Maiden statue. The drainage system
will allow excess water to flow through the pool, refresh it, and drain into
the brook. The muddy trenches that spill off the brook will be eliminated.
LEVEL 1 - 2 OF 8 STORIES
Copyright 2000 The Indianapolis Star
All Rights Reserved
The Indianapolis Star
September 1, 2000 Friday City final Edition
SECTION: EXTRA; HERMAN; Pg. 01E
LENGTH: 841 words
HEADLINE: License to move is not up to BMV
BYLINE: GREG DAWSON
BODY:
... lagoon: It's close to a maintenance facility where workers wash their
vehicles on a paved area. The water is supposed to flow through a drainage
trench into a creek, but over the years, the trench has filled with soil.
LEVEL 1 - 3 OF 8 STORIES
Copyright 2000 The Columbus Dispatch
Columbus Dispatch (Ohio)
June 4, 2000, Sunday
SECTION: NEWS, Pg. 1D
LENGTH: 724 words
HEADLINE: LOCKBOURNE MAKING ITS MARK IN HISTORY
BYLINE: Shannon Beatty, Dispatch Staff Reporter
... plants fills a trench enclosed by two 90-foot-long stone walls.
When rain falls, water flows through the trench. But it isn't just a
drainage ditch. And Eunice McMullen wants to make sure that no one mistakes it
for one.
LEVEL 1 - 6 OF 8 STORIES
Copyright 1996 Sentinel Communications Co.
Orlando Sentinel (Florida)
November 2, 1996 Saturday, METRO
SECTION: HOMES; Pg. G1
LENGTH: 1520 words
HEADLINE: YOUR FLORIDA HOME
BYLINE: Kathleen M. Kiely
BODY:
... consists of a large holding tank (the septic tank) followed by a network
of drainpipes in gravel-filled trenches (the drain field). Gravity makes waste
water flow through the system. If the drain field is higher than the septic
tank, a submersible pump is used to move the waste water from the septic tank to
the drain field.
/kbp/
Kimberly Boulware Perry
Trademark Attorney, Law Office 112
voice: 703/308-9112x251; fax: 703/746-8112
email: Ecom112@uspto.gov
email: kimberly.perry@uspto.govl: Ecom112@uspto.gov
email (questions) :kimberly.perry@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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.