[Important Email Information]

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. 

 

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

Serial Number  78/813956

 

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

 

No Conflicting Marks

 

After searching the Office database, the examining attorney found no similar pending or registered marks which would bar registration under the Trademark Act Section 2(d), 15 U.S.C. Section 1052(d).  TMEP 1105.01.

 

REFUSAL: Section 2(e)(1) Merely Descriptive

 

Registration is refused because the proposed mark merely describes a feature or use 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 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 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).  Hunter Publishing Co. v. Caulfield Publishing Ltd., 1 USPQ2d 1996 (TTAB 1986); In re Camel Mfg. Co., Inc., 222 USPQ 1031 (TTAB 1984); In re Gentex Corp., 151 USPQ 435 (TTAB 1966).

 

Here, applicant’s mark is SLIDER for “mechanical, manual or power-operated lift that raises vessels or watercraft from the water to an elevated position.”  A “slider” refers to something that slides, such as a sliding part or mechanism.  See attached definitions from Merriam-Webster Online Dictionary.  Watercraft lifts utilize sliding systems to dock and lift personal watercraft, boats, and other vessels.  See attached third-party Internet web sites that refer to lifts that utilize such a feature: the “WetPort…a unique slide-on lift system;” and the “Hydroport…just drive on to load and slide off to launch.”  Moreover, “sliders” are considered to be a component of other lifting devices.  See attached article from the Lexis-Nexis News Database.  As such, the term SLIDER merely describes a feature or use of applicant’s goods.

 

Advisory: Section 1(b) Application Not Eligible for Supplemental Register Until Allegation of Use is Filed

 

A mark in an application under Trademark Act Section 1(b) is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use under 37 C.F.R. §2.76 has been filed.  37 C.F.R. §§2.47(d) and 2.75(b); TMEP §1102.03.  When a Section 1(b) application is amended to the Supplemental Register, the effective filing date of the application is the date of filing of the amendment to allege use.  37 C.F.R. §2.75(b); TMEP §§206.01 and 1102.03.

 

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

 

Incorrect Classification

 

Manually operated lifts for watercraft are properly classified in International Class 8.  Applicant must correct the classification of these goods in the application and amend the application to classify them in International Class 8.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b).  Applicant may adopt the following classification:

 

Class 7: Mechanical or power-operated lift that raises vessels or watercraft from the water to an elevated position;

 

Class 8:            Manual lift that raises vessels or watercraft from the water to an elevated position.

 

37 C.F.R. §2.32; TMEP §§ 1401.021402.01(e).

 

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.

 

Multiple Class Application Requirements

 

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 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 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.

 

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

 

Clarification of Entity Type

 

Applicant has identified itself as a limited liability company organized under the laws of Florida, “comprising Kristy S. Tingle, U.S. Citizen.”  For the purpose of service of process, the limited liability company is like a corporation.  Therefore, it is unnecessary to identify individual owners, directors, or corporate officers of a limited liability company.  Applicant will remove the statement “comprising of Kristy S. Tingle, U.S. Citizen” from its application.  TMEP §803.03(h).

 

Request for Information

 

Applicant must submit samples of advertisements or promotional materials and a photograph of the identified goods because the nature of the goods on which applicant intends to use its mark is not clear from the present record.  If such materials are not available, then applicant must submit samples of advertisements or promotional materials and a photograph of similar goods.  In addition, applicant must describe in some detail the nature, purpose and channels of trade of the goods listed in the application.  37 C.F.R. §2.61(b); TMEP §§814 and 1402.01(e).

 

In addition, applicant must specify whether “SLIDER” has any significance, aside from trademark significance, in the watercraft lift trade or industry.  37 C.F.R. §2.61(b).  Specifically, the applicant must answer the following questions:

 

1)      Does “SLIDER” have any meaning or significance in the watercraft lift industry?

 

2)      Do any of applicant’s identified goods incorporate the usage of sliders?

 

3)      Do any of applicant’s identified goods allow watercraft or other vessels to slide onto or off of the goods?

 

4)      Does “SLIDER” have any other meaning or significance as applied to the identified goods?

 

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).

 

 

 

/David S. Miller/

David S. Miller

Trademark Examining Attorney

Law Office 113

Phone  (571) 272-8956

Fax      (571) 273-8956

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• 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.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

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.

 

 

Note:

 

In order to avoid size limitation constraints on large e-mail messages, this Office Action has been split into 3 smaller e-mail messages.  The Office Action in its entirety consists of this message as well as the following attachments that you will receive in separate messages:

 

Email 1 includes the following 5 attachments  

1. slider-1  

2. slide-1  

3. slide-2  

4. hewitt-1  

5. hewitt-2  

 

Email 2 includes the following 6 attachments  

1. hewitt-3  

2. tiger-1  

3. tiger-2  

4. tiger-3  

5. tiger-4  

6. slide-lex-1  

 

Email 3 includes the following 1 attachment  

1. slide-lex-2  

 

Please ensure that you receive all of the aforementioned attachments, and if you do not, please contact the assigned-examining attorney.