UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 78/205867
APPLICANT: Verilux, Inc.
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CORRESPONDENT ADDRESS: Wesley W. Whitmyer, Jr. ST ONGE STEWARD JOHNSTON & REENS LLC 986 Bedford Street Stamford CT USA 06905
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom116@uspto.gov
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MARK: FLICKER ELIMINATION TECHNOLOGY
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CORRESPONDENT’S REFERENCE/DOCKET NO: 03031-T0054A
CORRESPONDENT EMAIL ADDRESS:
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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 78/205867
This letter responds to the applicant’s communication filed on January 16, 2004.
The amendment to the Supplemental Register is accepted and entered, along with the amendment of the identification of goods. However, the following issue has been raised by the amendment to allege use.
Registration is refused because the proposed mark, as used on the specimen of record, merely identifies the technology used for achieving reduced flicker and would not be perceived as a trademark for the goods identified in the application. Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051, 1052 and 1127. See In re Griffin Pollution Control Corp., 517 F.2d 1356, 186 USPQ 166 (C.C.P.A. 1975); Congoleum Corp. v. Armstrong Cork Co., 218 USPQ 528, 535 n.13 (TTAB 1983); In re Big Stone Canning Co., 169 USPQ 815 (TTAB 1971). Rather than serving as a source indicator for the goods, the proposed mark merely informs the consumer that flicker elimination technology was used in producing the goods. It is used as one of three informational bullets under one of three subject areas about the goods. As such, it does not function as a trademark for the goods.
Where a term is used solely to identify a process, style, method, system, or the like, it is not registrable as a trademark. A process or system is only a way of doing something, and does not generally constitute a marketable or tangible product. The name of a system or process does not function as a trademark unless it is also used to identify and distinguish the goods listed in the application, and to indicate the source of those goods. The determination of whether matter functions solely as the name of a system or process and also as a trademark is based on a consideration of the manner in which the proposed mark is used, as evidenced by the specimen and any other information of record. See In re Griffin Pollution Control Corp., 517 F.2d 1356, 186 USPQ 166 (C.C.P.A. 1975) (OXINITE held not to function as a trademark for a gas mixture because, based on the specimens of record, consumers would associate the mark only with a water treatment process and not with the identified goods); See also TMEP §1301.02(e).
Applicant may respond to this refusal by submitting a substitute specimen showing proper use of the proposed mark as a trademark (to indicate the source of the goods), along with a statement that “the substitute specimen was in use in commerce prior to the filing of the amendment to allege use,” verified with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20. 37 C.F.R. §2.59(a); TMEP §904.09.
Please note: the applicant may withdraw the allegation of use at this time.
Furthermore, the applicant must disclaim the wording “TECHNOLOGY” apart from the mark as shown because it is incapable of trademark significance. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a). It merely indicates that technology was used in the production of the goods.
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 “TECHNOLOGY” apart from the mark as shown.
See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
/Linda M. King/
Trademark Attorney
Law Office 116
703-306-7907
Linda.King@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.