UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

 

ISSUE/MAILING DATE: 3/13/2011

 

This Office action is in response to applicant’s communication filed on 7/13/10. The applicant’s AAU, entity, color claim and amended identification of services are accepted by the Examiner.

 

SUMMARY OF NEW ISSUES that applicant must address:

 

• DISCLAIMER

 

 

NEW ISSUE

 

DISCLAIMER DELETION REQUIRED

 

Applicant has disclaimed the entire applied-for mark.  However, an entire mark may not be disclaimed.  TMEP §1213.06; see 15 U.S.C. §1056(a); In re Dena Corp. v. Belvedere Int’l Inc., 950 F.2d 1555, 1560, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991); In re Carlson, 91 USPQ2d 1198, 1203 (TTAB 2009); In re JT Tobacconists, 59 USPQ2d 1080, 1081 n.1 (TTAB 2001).  If the applied-for mark is not registrable as a whole, a disclaimer will not make it registrable.  TMEP §1213.06.

 

In the present case, however, the applied-for mark is not sufficiently stylized to carry the mark without the literal element.  Therefore, applicant must withdraw the disclaimer.

 

 

 

ISSUE CONTINUED AND REMAINING

 

SECTION 2(e)(1) REFUSAL – MERELY DESCRIPTIVE

Registration is refused because the applied-for mark merely describes the applicant’s services.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

 

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 (C.C.P.A. 1978); TMEP §1209.01(b); see, e.g., In re Polo Int’l Inc., 51 USPQ2d 1061 (TTAB 1999) (finding 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) (finding CONCURRENT PC-DOS merely descriptive of “computer programs recorded on disk” where relevant trade used the denomination “concurrent” as a descriptor of a particular type of operating system).  “Whether consumers could guess what the product is from consideration of the mark alone is not the test.”  In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).

 

The applied-for mark shows the wording in stylized lettering.  However, the degree of stylization in this case is not sufficiently striking, unique or distinctive so as to create a commercial impression separate and apart from the unregistrable components of the mark.  See In re Sambado & Son Inc., 45 USPQ2d 1312 (TTAB 1997); In re Bonni Keller Collections Ltd., 6 USPQ2d 1224 (TTAB 1987).

 

 

The term GREEN means “made with little environmental harm: produced in an environmentally and ecologically friendly way, e.g. by using renewable resources.” See the attached definition.  The applicant’s services according to its own website are: “[t]he Green Garage has a strong focus on the restoration and protection of our planet.   We emphasize a “greener lifestyle” by offering alternative ways to recycle and reuse things, and encourage a decreased dependency on nonrenewable goods.    We offer competitive prices, a wide variety of household goods, unique programs and services such as “the Green team”,  and “The Garage Sale Spot”.   They will strive to keep their customers comfortable and grounded, and full of good karma as they browse for treasures and necessities they know never made it to a landfill.” See the previously attached website.

 

Thus, in the context of applicant's services, the proposed mark merely describes the applicant’s services and registration on the Principal Register must be refused under Trademark Act Section 2(e)(1).

 

 

 

TEAS PLUS APPLICANTS MUST SUBMIT DOCUMENTS ELECTRONICALLY OR SUBMIT FEE:  Applicants who filed their application online using the reduced-fee TEAS Plus application must continue to submit certain documents online using TEAS, including responses to Office actions.  See 37 C.F.R. §2.23(a)(1).  For a complete list of these documents, see TMEP §819.02(b).  In addition, such applicants must accept correspondence from the Office via e-mail throughout the examination process and must maintain a valid e-mail address.  37 C.F.R. §2.23(a)(2); TMEP §§819, 819.02(a).  TEAS Plus applicants who do not meet these requirements must submit an additional fee of $50 per international class of goods and/or services.  37 C.F.R. §2.6(a)(1)(iv); TMEP §819.04.  In appropriate situations and where all issues can be resolved by amendment, responding by telephone to authorize an examiner’s amendment will not incur this additional fee.

 

If applicant has questions about the application or this Office action, please telephone the assigned trademark examining attorney at the telephone number below.

 

 

 

/ScottBibb/

Scott K. Bibb

Trademark Examining Attorney

Law Office 109

Ph- (571) 272-5669

F-   (571) 273-9109

Email: scott.bibb@uspto.

 

 

TO RESPOND TO THIS LETTER:  Go to http://www.gov.uspto.report/teas/eTEASpageD.htm.  Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application.  For technical assistance with online forms, 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.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/.  Please keep a copy of the complete TARR screen.  If TARR shows no change for more than six months, call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/teas/eTEASpageE.htm.

 

 

 

 

 

IMPORTANT NOTICE REGARDING YOUR TRADEMARK APPLICATION

Your trademark application (Serial No. 85002575) has been reviewed.   The examining attorney assigned by the United States Patent and Trademark Office (“USPTO”) has written a letter (an “Office Action”) on 3/13/2011 to which you must respond.  Please follow these steps:

 

1. Read the Office letter by clicking on this link OR go to http://tmportal.gov.uspto.report/external/portal/tow and enter your serial number to access the Office letter.       

 

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

 

2. Respond within 6 months, calculated from 3/13/2011 (or sooner if specified in the Office letter), using the Trademark Electronic Application System Response to Office Action form. If you have difficulty using the USPTO website, contact TDR@uspto.gov. 

 

3. Contact the examining attorney who reviewed your application with any questions about the content of the office letter:

 

/ScottBibb/

Scott K. Bibb

Trademark Examining Attorney

Law Office 109

Ph- (571) 272-5669

F-   (571) 273-9109

Email: scott.bibb@uspto.

WARNING

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

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, please use the Trademark Electronic Application System Response to Office Action form.