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. 

 

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  78/841512

 

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

 

 

No Likelihood of Confusion

 

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. Section 1052(d). 

 

 

Section 2(e)(1) - Descriptive Refusal

 

Registration is refused because the proposed mark merely describes the intended user of the 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 or group of users of a product or service is merely descriptive, within the meaning of Section 2(e)(1).  In re Planalytics, Inc., 70 USPQ2d 1453 (TTAB 2004) (GASBUYER merely describes intended user of risk management services in the field of pricing and purchasing natural gas); Hunter Publishing Co. v. Caulfield Publishing Ltd., 1 USPQ2d 1996 (TTAB 1986) (SYSTEMS USER found merely descriptive of a trade journal directed toward users of large data processing systems; evidence sufficient to establish distinctiveness under §2(f)); In re Camel Mfg. Co., Inc., 222 USPQ 1031 (TTAB 1984) (MOUNTAIN CAMPER merely describes intended users of retail and mail order services in the field of outdoor equipment and apparel); In re Gentex Corp., 151 USPQ 435 (TTAB 1966) (PARADER merely describes intended users of protective helmets, namely, parade marchers).

 

Applicant proposes the mark “MASTER PLUMBER” for intended use in connection with “Sump and utility pumps; disposals”.  The term “MASTER PLUMBER” is merely descriptive of the intended users, namely individuals with knowledge in the field of plumbing, of the applicant’s goods.  Accordingly, because the mark is merely descriptive of the intended users of the applicant’s goods, registration is refused under Trademark Act Section 2(e)1 based on mere descriptiveness.

 

Please see the attached Internet website evidence showing the term “MASTER PLUMBER” used to describe an individual with special qualifications in the plumbing field.

 

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

 

 

Identification of Goods

 

The goods are:  Sump and utility pumps; disposals.  The identification of goods is unacceptable as indefinite.  The applicant must clarify the identification of goods by specifying the common commercial names of the specific goods intended.  In particular, the applicant must specify the exact nature of the “utility pumps” and the “disposals”.  TMEP §1402.01.

 

The applicant may adopt the following identification, if accurate:

 

Class 07:  Sump pumps; Utility pumps, NAMELY, {SPECIFY COMMON COMMERCIAL NAME, E.G., CENTRIFUGAL PUMPS, ELECTRIC PUMPS, OIL DRAIN PUMPS, PNEUMATIC PUMPS, WATER PUMPS FOR {INDICATE TYPE OF WATER FACILITY, E.G., SPAS, BATHS, WHIRLPOOLS, SWIMMING POOLS, WATER FILTERING UNITS}, SUCTION PUMPS}; Disposals, NAMELY, FOOD WASTE DISPOSALS AND GARBAGE DISPOSALS

 

For assistance with identifying and classifying 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.

 

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

 

 

If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.

 

 

 

/Katy Halmen/

Trademark Examining Attorney

Law Office 109

Phone:  (571) 272-8911

Fax:  (571) 273-9109

 

 

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.