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  78/569705

 

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

 

The applicant’s preliminary amendment filed on April 8, 2005 has been received and made of record.  The application is based on Section 1(b) and 44(e).

PENDING APPLICATION

Although the examining attorney has searched the Office records and has found no similar registered mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), the examining attorney encloses information regarding pending Application Serial No. 78556117.  37 C.F.R. §2.83. 

 

There may be a likelihood of confusion between the applicant’s mark and the mark in the above noted application under Section 2(d) of the Act.  The filing date of the referenced application precedes the applicant’s filing date.  If the earlier‑filed application matures into a registration, the examining attorney may refuse registration under Section 2(d).

 

MARK IS MERELY DESCRIPTIVE

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.

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/services.  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 §1209.01(b).

The Applicant seeks to register the mark AUDIOLAB for “amplifiers; tuners; turntables; tone arms; cartridges; gramophone pickups; loudspeakers; hi-fidelity audio recording and reproducing equipment; record players; compact disc players; radios; cassette players; microphones; magnetic tapes for or bearing sound recordings; electric cables; electric connectors; televisions and video recorders.” 

Audio is defined as “of or relating to the broadcasting or reception of sound.  Of or relating to high-fidelity sound reproduction.”[1]  Lab is defined as “a laboratory.”[2]  When viewed in its entirety the proposed mark merely describes a feature, characteristic or use of the applicant’s goods, which are used in laboratories, which reproduce high-fidelity sound.  The Examining Attorney notes the attached representative registrations for goods which are highly similar/identical to the applicant’s goods and in which the terms “audio labs” or “audio laboratory” was found to be descriptive.  A mark that combines descriptive terms may be registrable if the composite creates a unitary mark with a separate, nondescriptive meaning.  However, if each component retains its descriptive significance in relation to the goods or services, the combination results in a composite that is itself descriptive.  In re Tower Tech, Inc., 64 USPQ2d 1314 (TTAB 2002) (SMARTTOWER merely descriptive of “commercial and industrial cooling towers and accessories therefor, sold as a unit”); In re Sun Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001) (AGENTBEANS merely descriptive of computer software for use in development and deployment of application programs on global computer network); In re Putman Publishing Co., 39 USPQ2d 2021 (TTAB 1996) (FOOD & BEVERAGE ONLINE held to be merely descriptive of news and information service for the food processing industry); In re Copytele Inc., 31 USPQ2d 1540 (TTAB 1994) (SCREEN FAX PHONE merely descriptive of “facsimile terminals employing electrophoretic displays”); In re Entenmann’s Inc., 15 USPQ2d 1750 (TTAB 1990), aff’d per curiam, 928 F.2d 411 (Fed. Cir. 1991) (OATNUT held to be merely descriptive of bread containing oats and hazelnuts).  In this case, the deletion of the space AUDIO and LAB is insufficient to create a composite with a separate, nondescriptive meaning.  Accordingly, the mark is refused registration on the Principal Register under Section 2(e)(1). 

Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

 

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

 

IDENTIFICATION OF GOODS

The identification of goods is unacceptable as indefinite because the nature of the goods is unclear and could identify goods which are properly classified in more than one International Class.  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).

 

The applicant must amend the identification to specify the common commercial name of the goods.  If there is no common commercial name, the applicant must describe the product and its intended uses.  TMEP §1402.01.  The applicant may adopt the following identification, if accurate:  TMEP section 804.  Please note where additional information is required.  

Class 2:  Toner cartridges

 

Class 9:                      Amplifiers; tuners (specify type, e.g. stereo tuners, car broadcasting tuners); phonograph turntables; tone arms for record players; cartridges (specify type, e.g. computer game cartridges, unfilled ink cartridges for photocopy machines or computer printers, video game cartridges); gramophones; loudspeakers; hi-fidelity audio recording and reproducing equipment, namely, (specify common commercial name for the equipment, e.g. sound recording apparatus); record players; compact disc players; radios; cassette players; microphones; magnetic tapes for or bearing sound recordings, namely, blank magnetic audio tapes and prerecorded magnetic audio tapes featuring sound recordings; electric cables; electric connectors; television sets and video tape recorders

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

For assistance with identifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.

 

MULTIPLE CLASS APPLICATION

If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those goods and/or services based on an intent to use the mark in commerce under Trademark Act Section 1(b):

 

(1)     Applicant must list the goods and/or services by international class with the classes listed in ascending numerical order.  TMEP § 1403.01; and

 

(2)     Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov).  37 C.F.R. §2.86(a)(2); TMEP §§810 and 1403.01.

 

BASIS 1(b) AND 44(e)

Applicant must advise the trademark examining attorney whether applicant intends to rely solely on the foreign registration as the basis for registration.  The foreign registration alone may serve as the basis for obtaining a U.S. registration resulting from this application.

 

Unless applicant indicates otherwise, this Office will presume that the applicant wishes to rely on both Section 1(b) and Section 44(e) as the bases for registration.  In this case, although the application may be approved for publication, the mark will not register until an acceptable allegation of use has been filed.

 

REQUEST FOR INFORMATION

The examining attorney requires information about the goods to determine whether all or part of the mark is merely descriptive as applied to the goods.  TMEP sec. 814.  The applicant must provide product information for the goods.  This may take the form of a fact sheet, instruction manual, or advertisement.  If unavailable, the applicant should submit the information for goods of the same type, explaining how its own product will differ.  If the goods feature new technology and no competing goods are available, the applicant must provide a detailed factual description of the goods.

In all cases, the submitted factual information must make clear how the goods operate, its salient features, and its prospective customer and/or channel of trade.  This information is not readily available to the examining attorney, and is pertinent to the descriptiveness determination.  Conclusory statements from the applicant or its attorney regarding the descriptiveness standard will not be sufficient to meet this requirement for information.

Trademark Rule 2.61(b) states "The examiner may require the applicant to furnish such information and exhibits as may be reasonably necessary to the proper examination of the application".  The Trademark Trial and Appeal Board has upheld a refusal of registration based on the applicant's failure to provide information requested under this rule.  In re Babies Beat Inc., 13 USPQ2d 1729 (TTAB 1990)(failure to submit patent information regarding configuration). 

RESPONSE TO OFFICE ACTION

No set form is required for response to this Office action.  The applicant must respond to each point raised.  The applicant should simply set forth the required changes or statements and request that the Office enter them.  The applicant must sign the response.

Applicants may now respond formally using the Office’s Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html.  When using TEAS the data the applicant submits is directly uploaded into the Office’s database, which reduces the time it takes to process the applicant’s response, while also eliminating the possibility of data entry errors by the Office.  Applicants are strongly encouraged to use TEAS to respond to office actions. 

PLEASE NOTE:  Because it delays processing, submission of duplicate papers is discouraged.  Unless specifically requested to do so by the Office, parties should not mail follow up copies of documents transmitted electronically or by fax.  TMEP 306.04; Cf.  ITC Entertainment Group Ltd. V. Nintendo of America Inc. 45 USPQ2d 2021 (TTAB 1998).

/Jennifer M. Martin/

Examining Attorney, L.O. 116

(571) 272-9193; (571) 273-9116 (fax)

Jennifer.Martin@uspto.gov

 

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 has been 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.