UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 78/911288
APPLICANT: DiversiTech Corporation
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: ULTRALITE
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CORRESPONDENT’S REFERENCE/DOCKET NO: 028924.055
CORRESPONDENT EMAIL ADDRESS: |
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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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 78/911288
The assigned trademark examining attorney has reviewed the referenced application and has determined the following:
Search Results
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.
However, the following refusal applies.
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 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).
Applicant proposes the mark ULTRALITE for use in connection with “a base for exterior residential air conditioning units.”
The term ULTRA means, in part “extreme: exceeding or going beyond all other of the same kind.” See attached.
The term LITE is a slight misspelling of the term “LIGHT,” meaning, in part, “not heavy: weighing comparatively little.” See attached. A slight misspelling of a word will not turn a descriptive or generic word into a non-descriptive mark. See C-Thru Ruler Co. v. Needleman , 190 USPQ 93 (E.D. Pa. 1976) (C-THRU held to be the equivalent of "see-through" and therefore merely descriptive of transparent rulers and drafting aids); In re Hubbard Milling Co ., 6 USPQ2d 1239 (TTAB 1987) (MINERAL-LYX held generic for mineral licks for feeding livestock).
The Examining Attorney assumes that Applicant’s goods are light. Thus the term light describes a feature of the goods. The term ULTRA is thus laudatory. The mark as a whole thus describes a characteristic of the goods.
Based on the above analysis, the mark must be refused based on §2(e)(1).
The record indicates that applicant has used its mark for a long time; therefore, applicant may 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 and/or services 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).
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).
The identification of goods is unacceptable as indefinite because some of the terms are overly broad so that the goods are vague and/or could fall into a different international class. Suggestions and explanations are incorporated into the identification proposed below. TMEP §1402.01. The applicant may adopt the following identification, if accurate:
{indicate composition of base such as metal (class 6), concrete (class 19), plastic (class 19) base for exterior residential air conditioning units. International Class {indicate class}.
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 or services that are not within the scope of the goods and services recited 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.
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).
/S. David Sterkin/
Trademark Attorney
U.S. Patent and Trademark Office
Law Office 110
(571) 272-5494
HOW TO RESPOND TO THIS OFFICE ACTION:
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.