Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

 

Serial Number  78/214569

 

This letter responds to the applicant’s communication filed on 3/15/05.  Applicant:

 

1. Argued against the refusal under Trademark Act Sections 1, 2 and 45.

 

Number(s) 1 is acceptable.  The final refusal under section 2(e)(1) is now continued.

 

In applicant’s communication dated 12/7/04, applicant provided additional evidence in support of its acquired distinctiveness claim.  The mark is so highly descriptive, if not generic, in relationship to the identified goods, however, that the evidence provided fails to prove applicant’s claim.  Moreover, in applicant’s 3/15/05 communication in which it argued in favor of the acceptance of the specimens of record, applicant provided information that appears to support the examining attorney’s contention that the proposed mark is so highly descriptive, if not generic, that it has not acquired distinctiveness with respect to the identified goods.  The examining attorney, in rejecting the specimens of use, contended that the specimens only showed use of the proposed mark “logic” in connection with a “mode” of operation of radar detectors, not in connection with the identified goods, namely, circuitry sold as a feature of radar detectors. Applicant explained that the “circuitry” is in fact the mode itself.  Applicant, therefore, is intending to use the term “logic” as a mark in connection with the radar detector’s “mode,” or as the applicant has so aptly explained, the radar detector’s “logic.”  Therefore, while it is unclear as to what the logic may have been in the selection of a mark such as “logic” to be used in connection with goods that the applicant itself refers to as “logic, the fact remains that when the proposed mark is viewed not in a vacuum, but in connection with the identified goods, it is highly descriptive.  Applicant has not proven acquired distinctiveness of such a highly descriptive mark.

 

The final refusal under section 2(e)(1) is now continued.

 

Proper Response to Final Action

Please note that the only appropriate responses to a final action are (1) compliance with the outstanding requirements, if feasible, (2) filing of an appeal to the Trademark Trial and Appeal Board, or (3) filing of a petition to the Director if permitted by 37 C.F.R. §2.63(b). 37 C.F.R. §2.64(a); TMEP §715.01.  Regarding petitions to the Director, see 37 C.F.R. §2.146 and TMEP Chapter 1700.  If the applicant fails to respond within six months of the mailing date of this refusal, this Office will declare the application abandoned.  37 C.F.R. §2.65(a).

 

NOTICE:  FEE CHANGE   

 

Effective January 31, 2005 and pursuant to the Consolidated Appropriations Act, 2005, Pub. L. 108-447, the following are the fees that will be charged for filing a trademark application:

 

(1) $325 per international class if filed electronically using the Trademark Electronic Application System (TEAS); or 

 

(2)   $375 per international class if filed on paper

 

These fees will be charged not only when a new application is filed, but also when payments are made to add classes to an existing application. If such payments are submitted with a TEAS response, the fee will be  $325 per class, and if such payments are made with a paper response, the fee will be $375 per class.

 

The new fee requirements will apply to any fees filed on or after January 31, 2005.

 

NOTICE:  TRADEMARK OPERATION RELOCATION

 

The Trademark Operation has relocated to Alexandria, Virginia.  Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:

 

Commissioner for Trademarks

P.O. Box 1451

Alexandria, VA  22313-1451

 

Applicants, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at http://www.gov.uspto.report/teas/index.html.

 

 

/David Elton/

Law Office 106

571 272-9317

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action issued via email you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above and include the serial number, law office number and examining attorney’s name in your response.

 

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

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

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