To: | Steel Gallery, Inc. (ralpert@morganlewis.com) |
Subject: | TRADEMARK APPLICATION NO. 78310626 - STEEL - 058666.2010 |
Sent: | 4/22/04 7:22:49 PM |
Sent As: | ECom116 |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 |
UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 78/310626
APPLICANT: Steel Gallery, Inc.
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CORRESPONDENT ADDRESS: Rochelle D. Alpert MORGAN, LEWIS & BOCKIUS LLP One Market, Spear Street Tower San Francisco, CA 94105
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514
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MARK: STEEL
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CORRESPONDENT’S REFERENCE/DOCKET NO: 058666.2010
CORRESPONDENT EMAIL ADDRESS: ralpert@morganlewis.com |
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 78/310626
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.
Section 2(e)(1) - Descriptive Refusal
The examining attorney refuses registration on the Principal Register because the proposed mark merely describes the goods/services. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §§1209 et seq.
Enclosed is a random sampling of articles from the Google Research Database showing that STEEL may be a type of art that is displayed in art galleries. Consumers may expect that there are steel art objects at the art gallery.
The two major reasons for not protecting descriptive marks are: (1) to prevent the owner of a mark from inhibiting competition in the sale of particular goods or services; and (2) to avoid the possibility of costly infringement suits brought by the registrant. This thus enables businesses and competitors to have the freedom to use common descriptive language when merely describing their own goods or services to the public in advertising and marketing materials. In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (C.C.P.A. 1978); In re Colonial Stores, Inc., 394 F.2d 549, 157 USPQ 382, 383 (C.C.P.A. 1968); Armour & Co. v. Organon Inc., 245 F.2d 495, 114 USPQ 334, 337 (C.C.P.A. 1957); In re Styleclick.com Inc., 57 USPQ2d 1445, 1448 (TTAB 2000).
Classification
The applicant has classified the services incorrectly. The applicant must amend the application to classify the services in International Class 35. 37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b).
Fee Increase
Fee increase effective January 1, 2003
Effective January 1, 2003, the fee for filing an application for trademark registration will be increased to $335.00 per International Class. The USPTO will not accord a filing date to applications that are filed on or after that date that are not accompanied by a minimum of $335.00.
Additionally, the fee for amending an existing application to add an additional class or classes of goods/services will be $335.00 per class for classes added on or after January 1, 2003.
/Jacqueline A. Lavine/
Examining Attorney, Law Office 116
(703) 306-7903
(703) 746-8116 FAX
Jacky.Lavine@uspto.gov INFORMAL
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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.