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  78/921252

 

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), available on the United States Patent and Trademark Office web site at http://www.gov.uspto.report/main/trademarks.htm.

 

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.

 

 

Mark is Merely Descriptive

The examining attorney refuses registration on the Principal Register because the proposed mark merely describes the goods and/or services.  Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1); TMEP section 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 section 1209.01(b).

 

Moreover, a mark that combines descriptive terms may be registrable if the composite creates a unitary mark with a separate, nondescriptive meaning.  However, if each component retains its descriptive significance in relation to the goods or services, the combination results in a composite that is itself descriptive.  In re Tower Tech, Inc., 64 USPQ2d 1314 (TTAB 2002) (SMARTTOWER merely descriptive of “commercial and industrial cooling towers and accessories therefor, sold as a unit”); In re Sun Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001) (AGENTBEANS merely descriptive of computer software for use in development and deployment of application programs on global computer network); In re Putman Publishing Co., 39 USPQ2d 2021 (TTAB 1996) (FOOD & BEVERAGE ONLINE held to be merely descriptive of news and information service for the food processing industry); In re Copytele Inc., 31 USPQ2d 1540 (TTAB 1994) (SCREEN FAX PHONE merely descriptive of “facsimile terminals employing electrophoretic displays”); In re Entenmann’s Inc., 15 USPQ2d 1750 (TTAB 1990), aff’d per curiam, 928 F.2d 411 (Fed. Cir. 1991) (OATNUT held to be merely descriptive of bread containing oats and hazelnuts).  In this case, the descriptive terms THERMO and SCIENTIFIC retain their descriptive significance in relation to many of applicant’s goods and/or services.  Attached are 6 third-party registrations in which the term THERMO is disclaimed and 6 third-party registrations in which the term SCIENTIFIC is disclaimed for goods and/or services that are similar to applicant’s goods and/or services.  As used in trademark registrations, a disclaimer is an admission that the term is descriptive.  TMEP Section 1213.

 

The applicant is seeking to register THERMO SCIENTIFIC for, among other things, “incubators for eggs; apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply, and sanitary purposes; scientific and technological service and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; chemical substances for preserving foodstuffs; pharmaceutical and veterinary preparations; scientific apparatus and instruments; and surgical, medical, dental and veterinary apparatus and instruments.”  The proposed mark is descriptive because it immediately communicates to the average consumer that the goods and/or services feature a heat-related function and/or are scientific in nature.  The definition of thermo is:

thermo-

 
thermo- or  therm- prefix

1.    Heat: thermochemistry.

2.      Thermoelectric: thermojunction.

 [From Greek thermê, heat, from thermos, warm, hot.][1]

 

The definition of scientific is:

 

sci·en·tif·ic

 
sci·en·tif·ic (sì´en-tîf¹îk) adjective

Abbr. sci.

Of, relating to, or employing the methodology of science.

 [Medieval Latin scientificus, producing knowledge : Latin scientia, knowledge. See science + Latin -ficus, -fic.]

— sci´en·tif¹i·cal·ly adverb[2]

 

If applicant chooses to respond to the refusal(s) to register, then applicant must also respond to the following requirement(s).

 

Identification of Goods and Services

The identification of goods and services is unacceptable, but for Class 35, because it is indefinite.  TMEP Section 1402.  The identification of goods and services should set forth common names, using terminology that is generally understood.  For products or services that do not have common names, the applicant should use clear and succinct language to describe or explain the term. TMEP Section 1402.01.  Therefore, the applicant must make the following clarifications.  In Class 1, applicant must specify that the chemicals are chemical preparations for use in agriculture, horticulture and forestry, namely, {i.e., for the treatment of seeds}.  In addition, applicant must indicate the use or industry of the unprocessed artificial resins.  Applicant must specify the type of tempering and soldering preparations.  Applicant must also specify the type of tanning substances and amend “adhesives used in industry to read, “adhesives for general industrial use” or specify the specific industry use.  In Class 5, applicant must specify the condition or disease or the specific medical field of use of the pharmaceutical and veterinary preparations.  Applicant must amend “food for babies” to read, “baby food.”  Applicant must specify the use of the plasters and the specific materials for dressings.  Applicant must specify the type of disinfectants.  In Class 7, applicant must specify the type of machines and machine tools.  Applicant must also indicate the type of motors and engines.  Applicant must specify the type of machine coupling and transmission components.  Applicant must specify the type of agricultural implements other than hand-operated.  In Class 9, applicant must specify the type of “scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), lifesaving and teaching apparatus and instruments.  Applicant must also remove all parentheses from the identification.  Applicant must also specify the type of apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity.  Applicant must specify the type of magnetic data carriers and the type of recording discs.  Applicant must clarify that the mechanisms for coin-operated apparatus is sold together as unit with the automatic vending machines.  Applicant must specify the type of calculating machine.  Applicant must also specify the type of data processing equipment.  Applicant must specify the use for the fire extinguishing apparatus.  In Class 10, applicant must specify the type of surgical, medical, dental and veterinary apparatus and instruments.  Applicant must also specify the type of orthopedic articles, and suture materials.  In Class 11, applicant must specify the type of apparatus for lighting, heating, steaming, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.  In Class 37, applicant must specify the type of repair services.  In addition, applicant must specify the type of installation services.  In Class 42, applicant must specify the type of scientific and technological services and research and design related thereto; In addition, applicant must specify the type of industrial analysis and research services.  Applicant must also specify that the design and development of computer hardware and software is for others.  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.  Applicant may adopt the following, if accurate.

 

Class 1 “chemicals used in industry, science and photography; chemical preparations for use in agriculture, horticulture and forestry, namely, {i.e., for the treatment of seeds}; unprocessed artificial resins for {indicate specific use or industry}; unprocessed plastics; manures; fire extinguishing compositions; tempering chemicals for use in metalworking or soldering; soldering chemicals; chemical substances for preserving foodstuffs; tanning agents for use in the manufacturing of leather; adhesives for general industrial use” in Class 1.

 

Class 5 “pharmaceutical preparations for the treatment of __________; veterinary preparations for the treatment of __________; sanitary preparations for medical purposes; dietetic substances adapted for medical use; baby food; medical plasters and materials for dressings, namely, gauze; material for stopping teeth; dental wax; all purpose disinfectants; preparations for destroying vermin; fungicides; herbicides” in Class 5.

 

Class 7 “machines and machine tools for the cutting and forming of materials; engines and motors for the generation of electricity; couplings for machines, except for land vehicles; belts for transmissions other than for land vehicles; tractor towed agricultural implements, namely, plows; incubators for eggs” in Class 7.

 

Class 9 “scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, checking, lifesaving and teaching apparatus and instruments, namely, _____________; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, namely, ____________; apparatus for recording, transmission or reproduction of sound and images; blank magnetic data carriers; pre-recorded magnetic data carriers featuring {indicate subject matter}; recording discs, namely, prerecorded CDs featuring music; automatic vending machines and mechanisms for coin operated apparatus therewith; cash registers; calculating machines, namely, calculators; data processing equipment, namely, data processors and computers; fire extinguishing apparatus for automobiles” in Class 9.

 

Class 10 “scientific, medical, dental and veterinary apparatus and instruments, namely, ___________; artificial limbs, eyes and teeth; orthopedic articles, namely, ________; suture materials, namely, ___________” in Class 10.

 

Class 11 “apparatus for lighting, heating, steaming, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, namely, _____________” in Class 11.

 

Class 37 “building construction and repair; installation services of building scaffolds” in Class 37.

 

Class 42 “scientific research; technological consultation in the technological field of computer hardware systems; design and development of computer hardware and software for others; legal services” in Class 42.

 

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.

 

Significance of the Mark

Applicant must specify whether the wording THERMO and SCIENTIFIC have any significance in the relevant trade or industry or as applied to the goods/services described in the application.  37 C.F.R. §2.61(b).  Specifically, is heat a function or feature of any of applicant’s proposed goods and or a feature of any of applicant’s proposed services?  Which goods and/or services relate to or employ the methodology of science?  Rule 2.61(b). 

 

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

 

 

/AMY GEARIN/

Trademark Attorney

Law Office 115

United States Patent and Trademark Office

571-272-9473

 

 

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.