To: | Isaberg Rapid AB (reed@hugheshubbard.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 85282854 - RAPID - 070040.1041 |
Sent: | 6/28/2011 7:13:54 PM |
Sent As: | ECOM103@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
APPLICATION SERIAL NO. 85282854
MARK: RAPID
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Isaberg Rapid AB
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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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: 6/28/2011
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62, 2.65(a); TMEP §§711, 718.03.
SEARCH OF OFFICE’S DATABASE OF MARKS
The Office records have been searched and there are no similar registered or pending marks that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.
However, applicant must address the following issue(s).
SECTION 2(e)(1) REFUSAL – MERELY DESCRIPTIVE
THIS REFUSAL APPLIES ONLY TO INTERNATIONAL CLASSES 7, 8, 11 AND 16.
Registration is refused because the applied-for mark merely describes a feature of applicant’s goods and/or services. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.
The registrability of a mark created by combining only descriptive words depends on whether a new and different commercial impression is created, and/or the mark created imparts an incongruous meaning as used in connection with the goods and/or services. TMEP §1209.03(d); e.g., In re Copytele, Inc., 31 USPQ2d 1540, 1542 (TTAB 1994); In re Associated Theatre Clubs, 9 USPQ2d at 1662. Where, as in this case, the combination of the descriptive words creates no incongruity, and no imagination is required to understand the nature of the goods and/or services, the mark is merely descriptive.
In the present case, the mark is RAPID and the goods are various power and hand tools related to stapling and tacking. Since these goods could perform their functions at a fast rate, or rapid, the mark is descriptive of a feature of the goods. The examining attorney refers to attached Exhibits 1-3 taken from the world wide web as evidence of the descriptive meaning of RAPID as it relates to the goods of the application. This evidence consists of screen shots of websites using the term RAPID to describe a stapler in a descriptive manner.
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
Additionally, applicant must address the following issue(s).
Identification of Goods
THIS REQUIREMENT APPLIES ONLY TO THE GOODS SPECIFIED THEREIN.
Applicant must further amend the identification of goods, as the description contains indefinite and/or overly broad language.
Applicant may adopt the following identification of goods, if accurate:
“Metal staples for industrial use” in International Class 6;
“Power tools, namely, stapling machines, tacking machines, stapling pliers, hot melt glue guns, power-operated stapling presses, power operated stapling guns, stapling hammers; power staplers for bookbinding apparatus; power staplers for machines for industrial purposes; power staplers for printers, collating machines and packaging machines” in International Class 7;
“Hand tools, namely, stapling pliers, stapling guns, stapling hammers, and frapping pliers” in International Class 8;
“Heat guns, namely, hot air guns” in International Class 11; and
“Non-electric stapling machines and stapling pliers for stapling paper, non-electric tacking machines for tacking office requisites, staplers, staples, staple removers, paper hole punches; non-electric staplers for paper handling equipment, namely, staplers for photocopiers, staplers for binders, staplers for bookbinding apparatus and machines” in International Class 16.
TMEP §1402.01.
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.
Proper Response to Action – Partial Refusal(s)/Requirement(s)
If applicant does not respond within six months of the mailing date of this action, the goods to which the refusal(s) and/or requirement(s) apply will be deleted from the application by Examiner’s Amendment. The application will proceed forward for the remaining goods. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).
/Sung In/
Sung In
Trademark Examining Attorney
Law Office 103
Ph: (571) 272-9097
Fax: (571) 272-9103
sung.in@uspto.gov
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. 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 trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
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.