Examiners Amendment

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

 

 

 

EXAMINER’S AMENDMENT

 

 

ISSUE/MAILING DATE:

 

 

DATABASE SEARCH:  The trademark examining attorney has searched the USPTO’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

APPLICATION HAS BEEN AMENDED:  In accordance with the authorization granted by the TMEP section 707.02, the trademark examining attorney has amended the application as indicated below.  Please advise the undersigned immediately of any objections.  Otherwise, no response is necessary.  TMEP §707.  Any amendments to the identification of goods and/or services may clarify or limit the goods and/or services, but may not add to or broaden the scope of the goods and/or services.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq.

 

Applicant’s Section 2(f) claim has been accepted and entered.  The Section 2(e)(1) refusal is moot.  The requirement for information regarding the services has been satisfied.

 

Applicant’s arguments regarding the Section 2(e)(1) mere descriptiveness refusal were carefully considered, but ultimately were unpersuasive.  Even though TRANSCON could mean be interpreted as involving consolidated transportation or transportation containers, as argued by applicant, the most historical, logical and immediate meaning for the term in connection with railroad transportation services, would be “transcontinental.”  Applicant’s statement that its railroad services are not provided from coast to coast is noted, but are across many states is noted.  The definition of “transcontinental” does not necessarily mean from coast to coast.  For example, “transcontinental” as defined by www.thefreedictionary.com/Transcontinental; Google search engine; January 27, 2012; 8:54pm; means “spanning or crossing a continent.”  The “crossing” would not need to be from coast to coast.  Attached are excerpts from various websites indicating that the term “transcontinental,” when used in connection with railroad services, does not literally mean from coast to coast (“Burlington Northern Santa Fe’s transcontinental main line runs from Chicago to the ports in the Pacific Northwest”; www.youtube.com/watch?v-guMWswBgxms; Google search engine; January 27, 2012; 8:54pm; and “Thus, in the United States, the term transcontinental railroad usually refers to a line over the Rocky Mountains between the Midwest and Pacific Ocean.”; encycl.opentopia.com/term/Transcontinental_railroad; Google search engine; January 27, 2012; 9:07pm).  For these reasons, applicant’s Section 2(f) claim was accepted, rather than applicant’s arguments on the merit of the refusal.

 

 

/Jeri Fickes/

USPTO

Trademark Examining Attorney

Law Office 107

571/272-9157

Email:  jeri.fickes@uspto.gov

 

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.