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: 11/1/2012

 

 

 

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(a), 2.65(a); TMEP §§711, 718.03.

 

Search Results

The trademark examining attorney has searched the Office’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).

 

Refusal – Activity Not a Service

Registration is refused because the activities recited in the identification of services are not registrable services as contemplated by the Trademark Act.  Trademark Act Sections 1, 2, 3 and 45, 15 U.S.C. §§1051-1053, 1127; see TMEP §§1301.01 et seq.

 

The activities set forth as services in an application are reviewed using the following criteria to determine whether they constitute registrable services:

 

(1) A service is a real activity, not an idea, concept, process or system;

 

(2) A service is performed primarily for the benefit of someone other than the applicant; and

 

(3) A service is an activity that is sufficiently separate and qualitatively different from an applicant’s principal activity, i.e., it cannot be an activity that is merely incidental or necessary to an applicant’s larger business.

 

TMEP §1301.01(a); see In re Canadian Pac. Ltd., 754 F.2d 992, 994-95, 224 USPQ 971, 973 (Fed. Cir. 1985); In re Betz Paperchem, Inc., 222 USPQ 89, 90 (TTAB 1984); In re Integrated Res., Inc., 218 USPQ 829, 831 (TTAB 1983); In re Landmark Commc’ns, Inc., 204 USPQ 692, 695 (TTAB 1979).

 

In this case, the description set forth in the identification of services is as follows: 

 

“A debt instrument issued by a company with a market capitalization of less than $400 million (a) that is issued at a par value of less than $1000; (b) that is publicly tradable; and (c) that may be issued with or without an equity component, including a conversion feature” [in International Class 036]. 

 

These activities are not registrable services because a “debt instrument” is an idea or concept, not a real activity (as opposed to something like “brokerage of bonds”).

 

Applicant should note the following additional ground for refusal.

 

Section 2(e)(1) Refusal

Registration is refused because the applied-for mark merely describes 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.

 

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods and/or services.  TMEP §1209.01(b); see In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005); In re Gyulay, 820 F.2d 1216, 1217-18, 3 USPQ2d 1009, 1010 (Fed. Cir. 1987). 

 

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).

 

Generally, if the individual components of a mark retain their descriptive meaning in relation to the goods and/or services, the combination results in a composite mark that is itself descriptive and not registrable.  In re Phoseon Tech., Inc., 103 USPQ2d 1822, 1823 (TTAB 2012); TMEP §1209.03(d); see, e.g., In re King Koil Licensing Co., 79 USPQ2d 1048, 1052 (TTAB 2006) (holding THE BREATHABLE MATTRESS merely descriptive of beds, mattresses, box springs, and pillows where the evidence showed that the term “BREATHABLE” retained its ordinary dictionary meaning when combined with the term “MATTRESS” and the resulting combination was used in the relevant industry in a descriptive sense); In re Associated Theatre Clubs Co., 9 USPQ2d 1660, 1663 (TTAB 1988) (holding GROUP SALES BOX OFFICE merely descriptive of theater ticket sales services because such wording “is nothing more than a combination of the two common descriptive terms most applicable to applicant’s services which in combination achieve no different status but remain a common descriptive compound expression”). 

 

Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the goods and/or services is the combined mark registrable.  See In re Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968).

 

In this case, both the individual components and the composite result are descriptive of applicant’s services and do not create a unique, incongruous, or nondescriptive meaning in relation to the services.  Specifically, the disclaimed term “Bond” refers to a “debt investment in which an investor loans money to an entity … that borrows the funds for a defined period of time at a fixed interest rate”, while “Micro” refers to a “Micro Cap” or “publicly traded company … that has a market capitalization between approximately $50 million and $300 million.”  (See attached entries from www.investopedia.com.)

 

Thus, the combined wording in the applied-for mark merely describes characteristics or features of the identified services that involve a “debt instrument issued by a company with a market capitalization of less than $400 million”.  Attached web page screen captures from www.gvccap.com indicate that the applicant’s services involve micro cap companies:

 

We focus primarily on providing comprehensive investment banking services to underexposed and undervalued microcap companies.

 

Microcap companies benefit from … an efficient means to raise capital … [from] a wide variety of investment products … including corporate, government and municipal bonds.

 

Our principals and their associates … are highly experienced in raising private and public debt and equity for the microcap market.

 

[Emphasis added in all.]

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

Applicant must respond to the requirement(s) set forth below.

 

Identification and Classification of Services

The wording in the identification of services is unacceptably indefinite and must be clarified because it is not sufficiently clear for proper classification.  Moreover, some of the wording is also too broad and could include services classified in other international classes.  Applicant may amend the identification and classification to the following, if accurate:

 

“Brokerage of publicly tradable bonds issued by companies with a market capitalization of less than $400 million, said bonds being issued at a par value of less than $1000 with or without an equity component that may include a conversion feature” [in International Class 036].

 

TMEP §§1402.01 and 1402.03.  [Note: Bracketed classification listing is provided for informational purposes, and does not appear in identification wording.]

 

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.  See TMEP §1402.04.

 

An applicant may amend an identification of services only to clarify or limit the services; adding to or broadening the scope of the services is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07 et seq.

 

Combined Applications

For an application with more than one international class, called a “multiple-class application,” an applicant must meet all of the requirements below for those international classes based on an intent to use the mark in commerce under Trademark Act Section 1(b):

 

(1)        LIST GOODS/SERVICES BY INTERNATIONAL CLASS:  Applicant must list the goods and/or services by international class; and

 

(2)        PROVIDE FEES FOR ALL INTERNATIONAL CLASSES:  Applicant must submit an application filing fee for each international class of goods and/or services not covered by the fee(s) already paid (confirm current fee information at http://www.uspto.gov, click on “View Fee Schedule” under the column titled “Trademarks”).

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

Additional Information Required

The nature of the services in connection with which applicant intends to use its mark is not clear from the present record and additional information is required.  An applicant can be required to provide more information if it is necessary for proper examination of the application.  37 C.F.R. §2.61(b); TMEP §§814, 1402.01(e); see In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).

 

Therefore, applicant must submit samples of advertisements or promotional materials for the identified services.  If such materials are not available, applicant must submit samples of advertisements or promotional materials for similar services.  In addition, applicant must describe in detail the nature, purpose and channels of trade of the services.

 

Mark Significance

Applicant must specify whether the wording “MICROBOND” and “MICRO BOND” has any significance in the relevant trade or industry or as applied to the goods and/or services described in the application, or if such wording is a “term of art” within applicant’s industry.  See 37 C.F.R. §2.61(b); TMEP §814.

 

Failure to respond to a request for information is an additional ground for refusing registration.  See In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701 (TTAB 2003); TMEP §814.

 

 

 

/Nelson B. Snyder III/

Trademark Examining Attorney

Law Office 107

(571) 272-9284

nelson.snyder@uspto.gov (Informal comms only Include Serial No.)

 

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.

 

 

 

 

 

IMPORTANT NOTICE REGARDING YOUR TRADEMARK APPLICATION

Your trademark application (Serial No. 85664180) has been reviewed.   The examining attorney assigned by the United States Patent and Trademark Office (“USPTO”) has written a letter (an “Office Action”) on 11/1/2012 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 11/1/2012 (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:

 

/Nelson B. Snyder III/

Trademark Examining Attorney

Law Office 107

(571) 272-9284

nelson.snyder@uspto.gov (Informal comms only Include Serial No.)

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.