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: 7/16/2008

 

A periodic review of the suspended application indicates that the cited prior pending Application Serial No. 78862215 has abandoned.  As a result, the application is removed from suspension. However, the examining attorney, after further review of the application, must issue the following new refusal and apologizes for any inconvenience caused to the applicant.

 

Trademark Act Section 2(e)(1) Refusal

 

Registration is refused because the applied-for mark merely describes a feature, characteristic, and/or subject matter of applicant’s goods.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

 

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods and/or services.  TMEP §1209.01(b); see In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005); In re Gyulay, 820 F.2d 1216, 1217-18, 3 USPQ2d 1009, 1010 (Fed. Cir. 1987).  Moreover, a mark that identifies a group of users to whom an applicant directs its goods and/or services is also merely descriptive.  TMEP §1209.03(i); see In re Planalytics, Inc., 70 USPQ2d 1453, 1454 (TTAB 2004).

 

In the instant case, applicant seeks registration of OFF THE GRID for “apparatus for converting electronic radiation to electrical energy, namely photovoltaic solar modules; apparatus for converting electronic radiation to electrical energy, namely photovoltaic solar-thermal hybrid modules; batteries; battery charge devices; battery chargers; battery packs; charging appliances for rechargeable equipment; current converters; current rectifiers; electric converters; electric storage batteries; electric voltage transformers; electrical cells and batteries; electrical storage batteries; inverters; light emitting diode displays; light emitting diodes; nickel-cadmium storage batteries; photovoltaic cells; power supplies; solar cells,”; and “electric holiday lights; electric light bulbs; electric lighting fixtures; electric luminaries; lamps for outdoor use; landscape lighting installations; led light bulbs; light post luminaires; lighted outdoor holiday sculptures and wire frame statues; lighted party-themed decorations, electric light decorative strings; lighting tubes; luminaries; miniature light bulbs; outdoor lighting, namely, paver lights; solar light fixtures, namely, indoor and outdoor solar powered lighting units and fixtures.” The term OFF THE GRID is defined as “not requiring utilities such as electricity, water, etc.” See the attached evidence from www.dictionary.com, www.wordspy.com, and Wikipedia’s dictionary.

 

As evidenced by the attached websites, the applicant’s mark directly conveys that its goods don’t require utilities. Therefore, the proposed mark merely describes a main feature, characteristic, and/or subject matter of the applicant’s goods and registration on the Principal Register must be refused under Trademark Act Section 2(e)(1).

 

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.

 

Suggested Alternatives for Responding to the Section 2(e)(1) Refusal

 

Although an amendment to the Supplemental Register would normally be an appropriate response to this refusal, such a response is not appropriate in the present case.  The instant application was filed under Trademark Act Section 1(b) and is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use meeting the requirements of 37 C.F.R. §2.76(b), (c) has been timely filed.  37 C.F.R. §2.47(d); TMEP §§816.02, 1102.03.

 

If applicant files an acceptable allegation of use and also amends to the Supplemental Register, the effective filing date of the application will be the date on which applicant met the minimum filing requirements of 37 C.F.R. §2.76(e) for the amendment to allege use.  37 C.F.R. §2.75(b); TMEP §§816.02, 1102.03.

 

Amendment to Allege Use Guidelines

 

To amend the application filing basis from an intent to use application under Trademark Act Section 1(b) to a use in commerce basis under Section 1(a), applicant must file, prior to approval of the mark for publication, an amendment to allege use that satisfies the requirements of 37 C.F.R. §2.76.  See 15 U.S.C. §1051(c); 37 C.F.R. §2.35(b)(8); TMEP §§806.01(b), 1103. 

 

The following must be submitted in an amendment to allege use in order to amend an application to use in commerce under Section 1(a):

 

(1)     The following statement:  “Applicant is believed to be the owner of the mark and that the mark is in use in commerce;” 

 

(2)     The date of first use of the mark anywhere on or in connection with the goods and/or services;

 

(3)     The date of first use of the mark in commerce as a trademark or service mark;

 

(4)     A specimen showing actual use of the mark in commerce for each class of goods and/or services for which use is being asserted.  If a single specimen supports multiple classes, applicant should indicate which classes the specimen supports rather than providing multiple copies of the same specimen;

 

(5)     A filing fee of $100 per class for each international class of goods and/or services for which use is being asserted (current fee information should be confirmed at http://www.uspto.gov); and

 

(6)     Verification of the above (1) through (3) requirements in an affidavit or signed declaration under 37 C.F.R. §§2.20, 2.33. 

 

See 37 C.F.R. §§2.6(a)(2), 2.56, 2.76(b); TMEP §§1104.08, 1104.09(e). 

 

Amendments to allege use can be filed online at http://www.gov.uspto.report/teas/index.html.

 

Sample Declaration

 

Should the applicant’s response require verification, please note the following.

 

The following is a properly worded declaration under 37 C.F.R. §2.20.  Applicant should add this declaration to the end of its response, properly signed and dated by a person authorized under 37 C.F.R. §2.33(a).  TMEP §804.01(b).

 

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)

 

Information Request

 

To permit proper examination of the application, applicant must submit additional product information about the goods.  See 37 C.F.R. §2.61(b); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701-02 (TTAB 2003); TMEP §814.  The requested product information should include fact sheets, instruction manuals, and/or advertisements.  If these materials are unavailable, applicant should submit similar documentation 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, applicant must provide a detailed description of the goods. 

 

The submitted factual information must make clear how the goods operate, their salient features, and their prospective customers and channels of trade.  Conclusory statements regarding the goods will not satisfy this requirement.

 

Failure to respond to a request for information is an additional ground for refusing registration.  See In re DTI, 67 USPQ2d at 1701-02.  Merely stating that information about the goods is available on applicant’s website is an inappropriate response to a request for additional information and is insufficient to make the relevant information of record.  See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).

 

Assistance

 

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

 

TEAS PLUS APPLICANTS MUST SUBMIT DOCUMENTS ELECTRONICALLY OR SUBMIT FEE:  TEAS Plus applicants should submit the following documents using the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html:  (1) written responses to Office actions; (2) preliminary amendments; (3) changes of correspondence address; (4) changes of owner’s address; (5) appointments and revocations of attorney; (6) amendments to allege use; (7) statements of use; (8) requests for extension of time to file a statement of use, and (9) requests to delete a §1(b) basis.  If any of these documents are filed on paper, they must be accompanied by a $50 per class fee.  37 C.F.R. §§2.6(a)(1)(iv) and 2.23(a)(i).  Telephone responses will not incur an additional fee.  NOTE:  In addition to the above, applicant must also continue to accept correspondence from the Office via e-mail throughout the examination process in order to avoid the additional fee.  37 C.F.R. §2.23(a)(2).

 

 

 

 

/James W. Stein/

Trademark Examining Attorney

Law Office 107

Phone No. (571) 272-3056

 

 

RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.gov.uspto.report/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail.  For technical assistance with the form, please e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned examining attorney.  Do not respond to this Office action by e-mail; 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.

 

 

 

 

 

                                                                

IMPORTANT NOTICE

USPTO OFFICE ACTION HAS ISSUED ON 7/16/2008 FOR

APPLICATION SERIAL NO. 78922989

 

Please follow the instructions below to continue the prosecution of your application:

  

VIEW OFFICE ACTION: Click on this link http://tmportal.gov.uspto.report/external/portal/tow?DDA=Y&serial_number=78922989&doc_type=OOA&mail_date=20080716 (or copy and paste this URL into the address field of your browser), or visit http://tmportal.gov.uspto.report/external/portal/tow and enter the application serial number to access the Office action.

 

PLEASE NOTE: The Office action may not be immediately available but will be viewable within 24 hours of this notification.

 

RESPONSE MAY BE REQUIRED: You should carefully review the Office action to determine (1) if a response is required; (2) how to respond; and (3) the applicable response time period. Your response deadline will be calculated from 7/16/2008.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System response form at http://www.gov.uspto.report/teas/eTEASpageD.htm.

 

HELP: For technical assistance in accessing the Office action, please e-mail

TDR@uspto.gov.  Please contact the assigned examining attorney with questions about the Office action. 

 

        WARNING

1. The USPTO will NOT send a separate e-mail with the Office action attached.

 

2. Failure to file any required response by the applicable deadline will result in the ABANDONMENT of your application.