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  78/402766

 

The assigned trademark examining attorney has reviewed the referenced application and has determined the following.

 

The Office records have been searched and no similar registered or pending mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.

 

Registration, however, is refused for the following reason.

 

Section 2(e)(1) - Descriptive Refusal

 

Registration is refused because the proposed mark is a laudatory term, describing applicant’s goods.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §§1209 et seq.

 

Laudatory terms, i.e., those terms that attribute quality or excellence to goods or services, are considered descriptive terms under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §1209.03(k).  That is, laudatory terms, phrases and slogans are nondistinctive and unregistrable without proof of acquired distinctiveness.  In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001) (THE ULTIMATE BIKE RACK); In re Best Software Inc., 58 USPQ2d 1314 (TTAB 2001) (BEST and PREMIER); In re Dos Padres Inc., 49 USPQ2d 1860 (TTAB 1998) (QUESO QUESADILLA SUPREME); In re Consolidated Cigar Co., 35 USPQ2d 1290 (TTAB 1995) (SUPER BUY); General Foods Corp. v. Ralston Purina Co., 220 USPQ 990 (TTAB 1984) (ORIGINAL BLEND).

 

Here, the mark is “DELUXE” for “throws, blankets, and tapestries.”  The word “DELUXE” is defined as “particularly elegant or luxurious.”  See the attached.  The mark, then, ascribes “DELUXE” or “particularly elegant or luxurious” features to applicant’s goods.

 

The proposed mark comprises wording in stylized lettering.  However, the degree of stylization in this case is not sufficiently striking, unique or distinctive as to create a commercial impression separate and apart from the unregistrable components of the mark, and thus is not sufficient to render the mark registrable.  In re Bonni Keller Collections Ltd., 6 USPQ2d 1224 (TTAB 1987); In re Miller Brewing Co., 226 USPQ 666 (TTAB 1985); In re Geo. A. Hormel & Company, 227 USPQ 813 (TTAB 1985); In re Cosmetic Factory, Inc., 220 USPQ 1103 (TTAB 1983); In re Carolyn’s Candies, Inc., 206 USPQ 356 (TTAB 1980).  The addition of the tilde, then, does not provide sufficient stylization to overcome the descriptive nature of the mark.

 

For evidence of the laudatory nature of the word, please see the evidence at the end of this Office Action, which is from the Nexis® computerized database.  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); TMEP §710.01(a).

 

For example, in the article numbered 2, the author describes the blanket in the emergency kit as a deluxe blanket.  In the article numbered 5, the author reports there is “a new, deluxe-blanket manufacturing plant scheduled to open.”  See the articles following below.

 

For additional evidence, please see the attached print-outs from a Google® search of the Internet.  Printouts of articles downloaded from the Internet are admissible as evidence of information available to the general public, and of the way in which a term is being used by the public.  TMEP §710.01(b).   In re Total Quality Group Inc., 51 USPQ2d 1474, 1475-76 (TTAB 1999); Raccioppi v. Apogee Inc., 47 USPQ2d 1368, 1370-1 (TTAB 1998).

 

For example, note the various websites where baby blankets are referred to as deluxe blankets.  The Blankies website even goes on to explain that the deluxe blankets are made out of luxury fabrics like micro fleece and velour.  See the attached.

 

Therefore, because the mark merely is a laudatory description of the goods, registration is refused.

 

If applicant chooses to respond to the refusal to register, then applicant must also respond to the following requirements.

 

Indefinite Identification of Goods

 

The wording “throws, blankets, and tapestries” in the identification of goods needs to be clarified because it is too broad and could include goods classified in other international classes.  TMEP §§1402.01 and 1402.03.  Specifically, the applicant must clarify the type of “blanket” upon which the mark will be used.  If it is a “bed blanket” or “children’s blanket,” the applicant may so indicate.  Please note that these goods are located in International Class 24.  “Fire blankets” are located in International Class 9; horse blankets are in International Class 18.  “Electric blankets not for medical purposes” are located in International Class 11.  Also, the applicant must specify that the “tapestries” are made of “textile.”  “Tapestry-style wall hangings, not of textile” are located in International Class 27.

 

In the identification of goods, applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases.  If applicant chooses to use indefinite terms such as “accessories,” “components,” “devices,” “equipment,” “materials,” “parts,” “systems” and “products,” then such terms must be followed by the word “namely” and a list of the specific goods identified by their common commercial or generic names.  TMEP §§1402.01 and 1402.03(a).

 

Applicant may adopt the following identification of goods, if accurate:

 

Fire blankets; in International Class 9.

 

Electric blankets not for medical purposes; in International Class 11.

 

Throws; Bed blankets; Woolen blankets; Children’s blankets; Tapestries made of textile; in International Class 24.

 

Tapestry-style wall hangings, not of textile; in International Class 27.

 

Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.

 

For help in drafting a proper recitation of goods and services, please consult the Patent and Trademark Office Acceptable Identification of Goods and Services Manual. A searchable version of the Identification of Goods and Services Manual is available online at our website. The address is: http://tess2.gov.uspto.report/netahtml/tidm.html.

 

Multiple Class Application

 

If the applicant prosecutes this application as a combined, or multiple‑class, application, the applicant must comply with each of the following.

 

(1)     The applicant must list the goods by international class with the classes listed in ascending numerical order.  TMEP §1403.01.

 

(2)     The applicant must submit a filing fee for each international class of goods not covered by the fee already paid.  37 C.F.R. §§2.6(a)(1) and 2.86(a); TMEP §§810.01 and 1403.01.  Effective January 1, 2003, the fee for filing a trademark application is $335 for each class.

 

Here, the applicant has paid for one International Class. If the applicant adopts the suggested identification above, the applicant must pay for three additional International Classes.

 

Response Guidelines

 

Please note that there is no required format or form for responding to this Office action.  However, applicant should include the following information on all correspondence with the Office:  (1) the name and law office number of the examining attorney; (2) the serial number of this application; (3) the mailing date of this Office action; and, (4) applicant's telephone number.

 

When responding to this Office action, applicant must make sure to respond in writing to each refusal and requirement raised.  If there is a refusal to register the proposed mark, then applicant may wish to argue against the refusal, i.e., explain why it should be withdrawn and why the mark should register.  If there are other requirements, then applicant should simply set forth in writing the required changes or statements and request that the Office enter them into the application record.  Applicant must also sign and date its response.

 

The following legal authorities govern the processing of trademark and service mark applications by the Office:  The Trademark Act, 15 U.S.C. §§1051 et seq., the Trademark Rules of Practice, 37 C.F.R. Part 2, and the Office’s Trademark Manual of Examining Procedure (TMEP) (3rd ed., Rev. 2, May 2003), available on the United States Patent and Trademark Office web site at http://www.gov.uspto.report/main/trademarks.htm.

 

“TMEP” refers to the Trademark Manual of Examining Procedure (3rd ed., Rev. 2, May 2003), available on the United States Patent and Trademark Office website at www.gov.uspto.report/main/trademarks.htm.  This is a detailed guidebook written by the Office to explain the laws and procedures that govern the trademark application, registration and post registration processes.

 

Applicant may wish to hire a specialist attorney to assist in prosecuting this application because of the technicalities involved.  The Office cannot aid in the selection of a trademark attorney.  37 C.F.R. §2.11.  Applicant may wish to consult the Yellow Pages for a listing of attorneys specializing in trademark or intellectual property law, or seek guidance from its local Bar Association attorney-referral service.

 

 

NOTICE:  TRADEMARK OPERATION RELOCATING OCTOBER AND NOVEMBER 2004

 

The Trademark Operation is relocating to Alexandria, Virginia, in October and November 2004.  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, registration owners, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at www.uspto.gov.

 

 

 

/Jason Eric Lott/

Jason Eric Lott

Trademark Examining Attorney

Law Office 113

Phone: 571-272-9721

Fax: 571-273-9721

 

 

How to respond to this Office Action:

 

You may respond formally using the Office's Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://eteas.gov.uspto.report/V2.0/oa242/WIZARD.htm and follow the instructions therein, but you must wait until at least 72 hours after receipt if the office action issued via e-mail).  PLEASE NOTE: Responses to Office Actions on applications filed under the Madrid Protocol (Section 66(a)) CANNOT currently be filed via TEAS.

 

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.

 

 

Nexis Evidence

                                                                         108B8C

Print Request:   Selected Document(s): 2,4,5

                 

Time of Request: November 10, 2004  08:43 AM EST

 

Number of Lines: 67

Job Number:      1821:19572887

 

Client ID/Project Name: 

 

Research Information:

 

 News,  All (English,  Full Text)

"deluxe blanket"

 

 

 

Send to:  LOTT, JASON

          TRADEMARK LAW LIBRARY

          2101 CRYSTAL PLAZA ARC

          MAILBOX 314

          ARLINGTON, VA 22202-4600

          

          

 

2 of 6 DOCUMENTS

 

Copyright 2003 Bell & Howell Information and Learning

Business Dateline

Copyright 2003 American City Business Journals 

Nashville Business Journal

 

May 9, 2003

 

 

 

SECTION: Vol. 19, No. 19; Pg. 1; ISSN: 08892873

 

B &H-ACC-NO: 336229791

 

LENGTH: 748 words

 

HEADLINE: Disaster designs

 

AUTHOR-NAME: Sarles, Judy

 

BODY:

...Three large red duffle bags have been placed at four locations around the firm.

Inside each bag are a deluxe blanket, a collapsible stretcher, a crowbar, a flashlight, duct tape, a first-aid kit, a walkie- ...

 

 

4 of 6 DOCUMENTS

 

Copyright 2002 The Tennessean

All Rights Reserved 

The Tennessean

 

December 12, 2002 Thursday 1st Edition

 

 

 

SECTION: WAM; Pg. 11W

 

LENGTH: 527 words

 

HEADLINE: Evening to remember will make memories for boys

 

BYLINE: BONNIE BURCH

 

BODY:

...My Friends House also needs a commercial washing machine, tennis shoes, slippers, bed pillows, twin-size deluxe blankets and movie passes and gift certificates to shopping and restaurants as rewards for the boys, said Whitehorn.

My Friend's House, a ...

 

 

5 of 6 DOCUMENTS

 

Copyright 2000 by Media Central Inc. A PRIMEDIA Company "All Rights Reserved" 

American Demographics

 

January, 2000

 

 

 

SECTION: THEGRID; Pg. 40

 

LENGTH: 1083 words

 

HEADLINE: Something Old, Something New;

Where new and used car buyers call home

 

BYLINE: BY JOHN FETTO

 

BODY:

...business manager at Greenville Ford, tells us that new-car sales are down, but he hopes that a new, deluxe-blanket manufacturing plant scheduled to open this summer will boost sales.

Meanwhile, sales of new cars in a majority of the ...