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  78/973134

 

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).

 

THE PROPOSED MARK IS MERELY DESCRIPTIVE OF THE FUNCTION OF THE SOFTWARE

 

Registration is refused because the proposed mark merely describes a feature or function 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 and/or services, 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).

 

 

For the purpose of a Section 2(e)(1) analysis, a term need not describe all of the purposes, functions, characteristics or features of the goods and/or services to be merely descriptive.  In re Dial-a-Mattress Operating Corp., 240 F.3d 1341, 1346, 57 U.S.P.Q.2d 1807 (Fed. Cir. 2001).  It is enough if the term describes only one significant function, attribute or property.  In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004) (“[A] mark may be merely descriptive even if it does not describe the ‘full scope and extent’ of the applicant’s goods or services.”) (quoting In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1346, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001)).

 

 

 

 

The applicant applied to register the mark PROFILE in connection with software that is used to collect, edit, organize, modify, book mark, transmit, store and share data and information.  This mark is merely descriptive of the software because it immediately tells consumers that the software allows users to create organizational profiles of data and information. 

 

 

PROFILE is defined as:  a set of data often in graphic form portraying the significant features of something; A control file for a program, especially a text file automatically read from each user's home directory and intended to be easily modified by the user in order to customize the program's behavior. See attached definitions.  The description of the function of this software is broad enough to include software that performs these functions.  The examining attorney has attached seven sample registrations from the Office’s database of registered marks wherein this term was disclaimed, registered on the Supplemental Register or under Section 2(f) for software and related items that perform a profiling function.

 

Therefore, the examining attorney refuses registration on the Principal Register on the basis that the mark is merely descriptive of the goods.

 

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

 

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).

 

 

CLARIFY CORPORATE ENTITY

 

If the applicant is in fact a limited liability company (LLC), and not a partnership, then the applicant must change the “Applicant’s Name” and “Applicant’s Entity Type” sections of the application to the following, if accurate:  ADS LLC, a limited liability company organized under the laws of Delaware.”  TMEP §803.03(h).

 

 

If the applicant is a partnership and not a limited liability company, then the applicant must list all general partners and their national citizenship (for individuals) or the U.S. state or foreign country of their organization or incorporation, as appropriate.  37 C.F.R. §2.32(a)(3)(iii); TMEP §§803.03(b) and 803.04.

 

If applicant is a partnership, the application must be amended to identify the partnership in the following format:  “_____________, a partnership organized under the laws of _____________, composed of ________________.”   In the blank after “composed of,” the applicant must list each general partner and his/her/its country of citizenship or state of organization.

 

 

ADDITIONAL FILING FEE REQUIRED

Applicant must submit an additional application processing fee of $50 per class because applicant has not complied with the requirement to receive communications from the Office by e-mail throughout the prosecution of the application.  37 C.F.R. §§2.6(a)(iv) and 2.23(b).  Specifically, on November 3, 2006, applicant filed a new power of attorney with a request to receive correspondence on paper, rather than via e-mail.

 

 

NOTE: APPLICABLE LEGAL AUTHORITIES

The following legal authorities govern the processing of trademark and service mark applications by the Office:  The Trademark Act, 15 U.S.C. §§1051 et seq., the Trademark Rules of Practice, 37 C.F.R. Part 2, and the Office’s Trademark Manual of Examining Procedure (TMEP) (4th ed., 2005).

“TMEP” refers to the Office’s Trademark Manual of Examining Procedure (4th ed., 2005), available on the United States Patent and Trademark Office website at  http://tess2.gov.uspto.report/netahtml/tidm.html   This is a detailed guidebook written by the Office to explain the laws and procedures that govern the trademark application, registration and post registration processes.   

The Trademark Applications and Registrations Retrieval (TARR) database on the USPTO website at http://tarr.uspto.gov provides detailed, up to the minute information about the status and prosecution history of trademark applications and registrations.  Please note that an application serial number or registration number is needed to be able to access this database.  TARR is available 24 hours a day, 7 days a week.

 

 

 

/Elissa Garber Kon/

Attorney, Law Office 106

phone: (571)-272-9181

fax: (571) 273-9106

email:  elissagarber.kon@uspto.gov

 

 

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.