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  78/278936

 

This letter responds to the applicant’s communication filed on January 15, 2004.

 

The disclaimer of bat has been entered in the record.

 

Refusal –Descriptive Section 2(e)(1)

 

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. Section 1052(e)(1); TMEP section 1209 et seq.

 

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 (CCPA 1978); In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985).

 

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 section 1209.01(b).

 

The examining attorney refers to excerpted articles from a search of the Lexis/Nexis research database in which the bat bends is used by others in a descriptive manner.

 

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. Section 1052(e)(1).  In re National Data Corp., 222 USPQ 515, 517 n.3 (TTAB 1984).

 

Thus, in view of this evidence, the proposed mark describes a feature of the goods, baseball and/or softball bat that bend when it come into contact with a ball. As such, the proposed mark is merely descriptive under Trademark Act Section 2(e)(1).

 

 

/Amos T. Matthews/

Examining Attorney

Law Office 108

(703) 308-9108 ext. 293

(703) 746-8108 (fax)

 

 

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 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.

 

108B8C

Print Request:   Selected Document(s): 3,7,8,12,13,14,16,22

                  

Time of Request: April 16, 2004  05:08 PM EDT

 

Number of Lines: 183

Job Number:      1822:0:13415732

 

Client ID/Project Name: 

 

Research Information:

 

 News,  All (English,  Full Text)

the bat that bend

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

Send to:  MATTHEWS, AMOS

          TRADEMARK LAW LIBRARY

          2101 CRYSTAL PLAZA ARC

          MAILBOX 314

          ARLINGTON, VIRGINIA 22202-4600

          

          

 

 

3 of 34 DOCUMENTS

 

Copyright 2004 The California Aggie via U-Wire

University Wire

 

February 26, 2004 Thursday

 

 

 

LENGTH: 593 words

 

HEADLINE: Aggie baseball brings new bats to lineup

 

BYLINE: By Paul Publico, The California Aggie; SOURCE: U. California-Davis

 

DATELINE: DAVIS, Calif.

 

BODY:

...agreement, the Aggies will use Wilson gear and exclusively swing DeMarini bats during the 2004 season.

The new state-of-the-art bat -- DeMarini's Vexxum-3 long barrel -- is known among players as the bat that bends. According to Wilson, the new aluminum bats used by the Aggies are virtually indestructible and are the first bat used in the NCAA to combine a composite handle with an aluminum alloy barrel. Addtionally, the Vexxum's ...

 

 

 

7 of 34 DOCUMENTS

 

Copyright 2001 The Baltimore Sun Company

All Rights Reserved 

The Baltimore Sun

 

October 28, 2001 Sunday FINAL EDITION

 

 

 

SECTION: ARTS & SOCIETY, Pg. 3E

 

LENGTH: 851 words

 

HEADLINE: More players going batty for tougher bats;

 Some swear that sugar maple baseball bats, harder and heavier than ash, make the ball fly.;

 FOR THE RECORD

 

BYLINE: Jon Morgan

 

SOURCE: Sun Staff

 

BODY:

...Illinois at Urbana-Champaign physicist and sports science expert Alan M. Nathan says he would like to try bending some Sam Bats in a laboratory. He wonders if the narrower cut makes the bat bend back and spring forward more on contact with the ball, creating a "trampoline effect" that knocks the ball further.

"There might be some marginal advantage," Nathan says. "My guess is it made very little ...

 

 

 

8 of 34 DOCUMENTS

 

Copyright 2000 Times Publishing Company 

St. Petersburg Times (Florida)

 

March 17, 2000, Friday, 0 South Pinellas Edition

 

 

 

SECTION: SPORTS; RAYS NOTEBOOK; Pg. 4C

 

HEADLINE: Bend but don't break

 

GRAPHIC:

BLACK AND WHITE PHOTO, JONATHAN NEWTON; Rays first baseman Fred McGriff straightens out a pitch even as his bat bends. The bat didn't break.

 

 

 

12 of 34 DOCUMENTS

 

Copyright 1999 N.Y.P. Holdings, Inc. All rights reserved. 

The New York Post

 

March 23, 1999, Tuesday

 

 

 

SECTION: All Editions; Pg. 075

 

LENGTH: 824 words

 

HEADLINE: PIAZZA'S BAT STILL A LAUNCHING PAD

 

BYLINE: DAVID WALDSTEIN

 

BODY:

"When you hit it right on the barrel, you almost feel the bat bend in your hand," Piazza said. "It's kind of a violent action, but effortless at the same time."

It's effortless when you are built like a comic book superhero - when your arms, ...

 

 

 

13 of 34 DOCUMENTS

 

Copyright 1998 The Yomiuri Shimbun 

The Daily Yomiuri

 

August 4, 1998, Tuesday

 

 

 

SECTION: Pg. 20

 

LENGTH: 913 words

 

HEADLINE: Secret of their success New bat added pop to Japanese softball team

 

BYLINE: Yomiuri

 

BODY:

...Federation (ISF) has regulations on a bat's diameter, length and weight, and prohibits the use of ferrotitanium. But there are no restrictions on the bat's structure.

The distance a ball flies is determined by the repulsion from the bat, which bends when it comes in contact with the ball. The bat provides a sling-like action to propel the ball.

The thinner the bat's surface, the more bend is created, which increases the distance of a hit ball. However, if the surface is too ...

 

 

 

14 of 34 DOCUMENTS

 

Copyright 1998 The Seattle Times Company 

The Seattle Times

 

March 31, 1998, Tuesday Final Edition

 

 

 

SECTION: NEWS; Pg. A8; SCIENCE

 

LENGTH: 1068 words

 

HEADLINE: SPLINTERING OLD BAT TECHNOLOGY -- SCIENTISTS STUDY WAYS TO KEEP THAT FAVORITE LOUISVILLE SLUGGER FROM SHATTERING

 

BYLINE: ERIC SORENSEN; SEATTLE TIMES STAFF WRITER

 

BODY:

...complex subject," said Steve Baum, president of the Michigan-based Baum Research & Development Co. and maker of a composite wood, fiber and foam bat. Among the factors to consider, he said, are the way a bat bends and the way a ball actually wraps around a bat on impact.

Bender calls wood "a Stone Age polymer with Space Properties," but among its properties is a certain fickleness. ...

...bat's vibrational nodal point, or sweet spot. In this state, the batter will feel virtually no vibration from the bat because whatever vibration there is travels through the bat vertically. When the ball strikes off the node, however, the bat bends and send vibrations that gain intensity as they travel, causing a stinging sensation in the batter's hands.

 

 

 

16 of 34 DOCUMENTS

 

Copyright 1997 Tower Media, Inc. 

The Daily News of Los Angeles

 

August 8, 1997, Friday,

 

 

 

SECTION: SPORTS,

 

LENGTH: 673 words

 

HEADLINE: GAINING GROUND; DODGERS BATS OVERCOME NOMO'S STRUGGLES;

 DODGERS 9, MONTREAL 4

 

BYLINE: Kevin Acee / Daily News Staff Writer

 

DATELINE: MONTREAL

 

BODY:

...Cedeno, who had singled for the second time in two at-bats. It also accounted for the game's final runs.

''I hit that ball really well,'' Piazza said. ''You can feel your bat bend (on a hit like that). It's really a pretty unbelievable feeling. It's better than you-know-what.''

 

 

 

22 of 34 DOCUMENTS

 

Copyright 1996 The Charlotte Observer

All Rights Reserved 

Charlotte Observer (North Carolina)

 

February 21, 1996 Wednesday ONE-3 EDITION

 

 

 

SECTION: LIVING; Movies * LAWRENCE TOPPMAN; Pg. 6E

 

LENGTH: 445 words

 

HEADLINE: AND NOW, A LESSON IN REALLY BAD CHEMISTRY

 

BYLINE: LAWRENCE TOPPMAN, Staff Writer

 

BODY:

...even looks cheesy. The final walk into the sunset proceeds toward an obvious painting. And in a confrontation at a convenience store, when the owner hits Whit's car with a baseball bat, the bat bends. Guys, call me next time - I'll give you $20 for a real bat.

*

MR. WRONG

STARS: Ellen DeGeneres, Bill Pullman.

RATING: PG-13 - modest violence and profanity, hint of ...

 

                                                                         108B8C

**********  Print Completed  **********

 

Time of Request:   April 16, 2004  05:08 PM EDT

 

Print Number:      1822:0:13415732