UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.

 

ISSUE/MAILING DATE: 7/12/2007

 

Registration was refused under Section 2(d) on the basis that the proposed mark is confusingly similar to the mark in Registration Nos. 3114968, 2732562, and 3009589.  Registration also was refused under Section 2(e)(1) on the basis that the proposed mark is merely descriptive.  Registration also was refused based on 1) clarification of the dates of use for Class 21, 2) an acceptable declaration in support of the dates of use, 3) an acceptable identification of goods, and 4) acceptable specimens supported by an appropriate affidavit or declaration. 

 

The mark in Registration No. 2732562 has been assigned to applicant.  Applicant has provided consent agreements with respect to the other registrations.   Thus, the refusal under Section 2(d) is withdrawn.  Applicant has clarified the dates of use and provided a declaration to support the dates of use.  They are accepted.

With respect to the refusal under Section 2(e)(1), applicant has claimed distinctiveness under Section 2(f) based on 18 years use.  However, 1) applicant’s claim appears applicable only to Class 20 as the dates of use for Class 21 are in 2003, and 2) applicant has not provided the appropriate declaration to support such a claim.

 

Additionally, the specimens for classes other than Class 20 remain unacceptable as applicant has not provided a declaration to support the substitute specimen. 

 

The examiner notes that a new requirement that applicant clarify its state of incorporation is made below.

 

Finally, the identification of goods still requires clarification.  Please note that after consulting with the Office identification expert, additional information is provided and the examiner apologizes for any inconvenience caused by not providing the information earlier.

 

Mark is Merely Descriptive

 

Registration is refused because the proposed mark merely describes the nature of applicant’s goods.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §§1209 et seq. A mark is merely descriptive under Section 2(e)(1) if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods and/or 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).  A mark that describes an intended user of a product or service is also merely descriptive within the meaning of Section 2(e)(1).  See Hunter Publ’g Co. v. Caulfield Publ’g, Ltd., 1 USPQ2d 1996 (TTAB 1986); In re Camel Mfg. Co., 222 USPQ 1031 (TTAB 1984).

 

The determination of whether a mark is merely descriptive is considered in relation to the identified goods, not in the abstract.  In re Abcor Dev. Corp., 588 F.2d 811, 814, 200 USPQ 215, 218 (CCPA 1978); see, e.g., In re Polo Int’l Inc., 51 USPQ2d 1061 (TTAB 1999) (DOC in DOC-CONTROL would be understood to refer to the “documents” managed by applicant’s software, not “doctor” as shown in dictionary definition); In re Digital Research Inc., 4 USPQ2d 1242 (TTAB 1987) (CONCURRENT PC-DOS found merely descriptive of “computer programs recorded on disk” where relevant trade uses the denomination “concurrent” as a descriptor of this particular type of operating system); see TMEP §1209.01(b).

 

In this case, applicant has applied for the mark “CADDY,” which will cover parts of furniture, namely, armrests for use in theater or stadium seating featuring cup or beverage holders; cup and beverage holders for subsequent permanent mounting to theater seating, stadium seating, grocery carts and push carts, wheel chairs, and walls and other structural components of buildings, railings and counters; concession trays.  “Caddy” refers to any of various devices for moving, carrying, or holding an item or collection of items (see definitions attached hereto and to the prior Office action).  In this case, applicant’s armrests feature holders, which by definition, are caddies.  Moreover, the beverage holders and trays are caddies as they are used for moving and holding items.

 

Accordingly, registration is refused under Trademark Act Section 2(e)(1), because the mark is merely descriptive of the relevant goods.

 

Supplemental Register:

 

The applied-for mark has been refused registration on the Principal Register.  However, applicant may respond to the refusal by submitting evidence and arguments in support of registration and/or by amending the application to seek registration on the Supplemental Register.  Trademark Act Section 23, 15 U.S.C. §1091; 37 C.F.R. §§2.47 and 2.75(a); TMEP §§801.02(b), 815 and 816 et seq.  Please note that amending to the Supplemental Register does not preclude applicant from submitting evidence and arguments against the refusal(s).

 

Distinctiveness Advisory:

 

Applicant appeared to be claiming distinctiveness in its response based on its use of the proposed mark for 18 years.  However, the examiner notes that the mark for the goods in Class 21 has been in use only for four years.  Therefore, the claim does not appear to be accurate.

 

If applicant has inaccurately identified the dates of use for Class 21 and has used its mark in connection with the goods for at least five years, then applicant may wish to seek registration on the Principal Register under Trademark Act Section 2(f), 15 U.S.C. §1052(f), based on acquired distinctiveness.  To amend the application to Section 2(f) based on five years use, applicant should submit the following written statement claiming acquired distinctiveness, if accurate:

 

The mark has become distinctive of the goods through applicant’s substantially exclusive and continuous use in commerce for at least the five years immediately before the date of this statement.

 

Applicant must verify this statement with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.41(b); TMEP §1212.05(d).  The following is a sample declaration.

 

The mark has become distinctive of the goods through applicant’s substantially exclusive and continuous use in commerce for at least the five years immediately before the date of this statement; the undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements and the like may jeopardize the validity of the application or document or any resulting registration, declares that the facts set forth in the application are true; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.

 

_____________________________

(Signature)

 

_____________________________

(Print or Type Name and Position)

 

_____________________________

(Date)

 

 

As noted above, although the trademark examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.  If applicant chooses to respond to the refusal(s) to register, then applicant must also respond to the following requirement(s).

 

New - State of Incorporation

 

Applicant has previously indicated that it is a Minnesota corporation.  However, the consent agreements identify applicant as a Delaware corporation.  Therefore, applicant must clarify its state of incorporation.  37 C.F.R. §2.32(a)(3)(ii); TMEP §§803.03(c) and 803.04. 

 

Advisory:  Please note that if the discrepancy is not explained, the refusal under Section 2(d) may be reinstated as to Registration Nos. 3114968 and 3009589.

Identification and Classification of Goods

 

The identification and classification of the goods require further clarification.  TMEP §§1401 and 1402.01.  More specifically and upon further review, it has been determined that while the term “cup holder” or “beverage holder” is often acceptable in Class 21, the common understanding of the term is that of a portable holder or bathroom accessory.  Applicant’s goods do not fit this description.

 

Please note that cup holders for vehicles are in Class 12.  Other cup holders that are for permanent mounting to other items must be classified according to their material composition.  Therefore, the goods will be in Class 6 or Class 20 depending on their composition. If they are metal, then they are in Class 6.  The non-metal ones would be in Class 20.

 

With respect to the goods presently in Class 20, please note that the term “or” is indefinite.  An identification must be “all-inclusive.”  Therefore, applicant must amend the term to a more definite term, e.g., “and.”  The examiner also notes that the original identification included the term “and.”

 

Applicant may adopt the following identification, if accurate:

 

Metal cup and beverage holders for subsequent permanent mounting to theater seating, stadium seating, and walls and other structural components of buildings, railings and counters, in Class 6.

 

Cup and beverage holders for subsequent permanent mounting to vehicles, namely, to grocery carts, push carts, and wheelchairs, in Class 12.

 

Parts of furniture, namely, armrests for use in theater and stadium seating featuring cup and beverage holders; non-metal cup and beverage holders for subsequent permanent mounting to theater seating, stadium seating, and walls and other structural components of buildings, railings and counters, in Class 20.

 

Concession trays, in Class 21.

 

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.uspto.gov/netahtml/tidm.html.

 

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.

 

Additionally, please note that fees are based upon the number of classes covered in an application.  If applicant adopts a description of goods covering more than two classes, then an additional fee will be required.  In this regard, applicant should note the following multiple-classification requirements.

 

Multiple-classification Requirements

 

If applicant prosecutes this application as a combined, or multiple‑class application, then applicant must comply with each of the requirements below for those goods and/or services based on actual use in commerce under Trademark Act Section 1(a):

 

(1)   Applicant must list the goods/services by international class with the classes listed in ascending numerical order;

 

(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); and

 

(3)   For each additional class of goods and/or services, applicant must submit:

 

(a)    dates of first use of the mark anywhere and dates of first use of the mark in commerce, or a statement that the dates of use in the initial application apply to that class; the dates of use, both anywhere and in commerce, must be at least as early as the filing date of the application;

 

(b)   one specimen showing use of the mark for each class of goods and/or services; the specimen must have been in use in commerce at least as early as the filing date of the application;

 

(c)    a statement that “the specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application;” and

 

(d)   verification of the statements in 3(a) and 3(c) in an affidavit or a signed declaration under 37 C.F.R. §2.20.  (NOTE:  Verification is not required where (1) the dates of use for the added class are stated to be the same as the dates of use specified in the initial application, or (2) the original specimens are acceptable for the added class.)

 

37 C.F.R. §§2.6, 2.34(a), 2.59, 2.71(c), and 2.86(a); TMEP §§810, 904.09, 1403.01 and 1403.02(c).

 

Please note that, if the appropriate declaration to support the substitute specimen is submitted, then  the specimen(s) of record appear to be acceptable for class(es) 12, 20, and 21 only.  Otherwise, the only acceptable specimen is the specimen for Class 20.

 

Specimen

 

Applicant indicated that a declaration to support the previously submitted substitute specimen was attached to its response.  However, none was received.

 

Applicant must submit an acceptable declaration to support the previously submitted substitute specimen.  The following is a sample declaration under 37 C.F.R. §2.20 with a supporting statement for a substitute specimen:

 

The undersigned being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements and the like may jeopardize the validity of the application or document or any registration resulting there from, declares that the substitute specimen was in use in commerce at least as early as the filing date of the application; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.

 

 

_____________________________

(Signature)

 

_____________________________

(Print or Type Name and Position)

 

_____________________________

(Date)

 

 

 

Alternative:

 

If applicant cannot satisfy the above requirement regarding the substitute specimen, applicant may amend the Section 1(a) filing basis (use in commerce) to Section 1(b) (intent to use basis), for which no specimen is required (this may be for one or all classes).  However, should applicant amend the basis to Section 1(b), registration cannot be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen.  15 U.S.C. §1051(c); 37 C.F.R. §§2.76, 2.88; TMEP Chapter 1100. 

 

In order to amend to Section 1(b), applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the filing date of the application.”  15 U.S.C. §1051(b); 37 C.F.R. §§2.34(a)(2) and 2.35(b)(1); TMEP §806.03(c).  The following is an acceptable declaration:

 

Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the filing date of the application.  The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements and the like may jeopardize the validity of the application or document or any resulting registration, declares that the facts set forth in the application are true; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.

 

_____________________________

(Signature)

 

_____________________________

(Print or Type Name and Position)

 

_____________________________

(Date)

 

 

Conditional Refusal

 

Pending a proper response, registration is refused as to all classes except Class 20, because the specimen does not show the applied-for mark in use in commerce as a trademark or service mark for the identified goods or services.  15 U.S.C. §§1051 and 1127; 37 C.F.R. §§2.34(a)(1)(iv) and 2.56.

 

Advisory

 

Should applicant respond via the Trademark Electronic Application System (TEAS), please note that if applicant desires, applicant may “click” on preformatted language for a declaration, and to indicate that a substitute specimen was in use in commerce as of the application filing date and that the mark has become distinctive based on substantially exclusive and continuous use in commerce for at least five years (if applicable). 

 

If applicant has any questions, please do not hesitate to contact the undersigned.

 

/Maureen Dall/

 

Maureen L. Dall

Trademark Attorney, Law Office 117

United States Patent and Trademark Office

Phone: 571-272-9714

 

RESPOND TO THIS ACTION: If there are any questions about the Office action, please contact the assigned examining attorney. A response to this Office Action should be filed using the Office’s Response to Office action form available at http://www.uspto.gov/teas/eTEASpageD.htm.  If notification of this Office action was received via e-mail, no response using this form may be filed for 72 hours after receipt of the notification.  Do not attempt to respond by e-mail as the USPTO does not accept e-mailed responses.

 

If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response.  Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.

 

STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov.  When conducting an online status check, print and maintain a copy of the complete TARR screen.  If the status of your application has not changed for more than six months, please contact the assigned examining attorney.