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: 3/28/2013

 

 

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.

 

 

Identification of Goods

The wording “polymer and polymer-containing bags; polymer and polymer-containing security bags” in the identification of goods is indefinite and must be clarified because it is not clear what the nature of the goods are.  See TMEP §1402.01.  Applicant must amend the identification to specify the common commercial name of the goods.  If there is no common commercial name, applicant must describe the product and its intended uses.  See id.

 

Applicant may adopt the following identification, if accurate:  Polymer and polymer plastic bags for transporting and securing valuables; tamper-evident polymer and polymer plastic bags for (specify, e.g., storage and transport of evidence); anti-static bags for securing and transporting valuables, namely, electronic devices; anti-static bags for securing and transporting devices that should be protected from an electrical charge, namely, computer hard drives, memory discs, and magnetic components; polymer and polymer security bags for securing and transporting materials, namely, valuables, evidence, currency, documents, and patient medications; polymer and polymer security plastic bags for securing, transporting, and identifying a chain-of-custody for materials, namely, valuables, evidence, currency, documents, and patient medications. 

 

Identifications of goods can be amended only to clarify or limit the goods; adding to or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.  Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.

 

Incorrect Classification

During preliminary review of the application, the Office incorrectly classified the goods in International Class 9.  Therefore, applicant must amend the application to classify the goods in International Class 22.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b). 

 

Description of Mark – Incomplete

The description of the mark is accurate but incomplete because it does not describe all the significant aspects of the applied-for mark.  Applications for marks not in standard characters must include an accurate and concise description of the entire mark that identifies literal elements as well as any design elements.  See 37 C.F.R. §2.37; TMEP §§808 et seq. 

 

Therefore, applicant must provide a more complete description of the applied-for mark.  The following is suggested:

 

The mark consists of the word ALERT in capital letters located within a silhouette of a stylized key, with  the wording “SECURITY BAG” to the right in dotted lines, all located within a rectangular box having rounded corners.

 

Disclaimer

Applicant must disclaim the descriptive wording “SECURITY BAG” apart from the mark as shown because it merely describes a desirable feature and nature of applicant’s goods, namely, bags for securing valuables and other materials.  See 15 U.S.C. §§1052(e)(1), 1056(a); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005).   The term SECURITY is defined as “the quality or state of being secure.” (See attachment)

 

An applicant may not claim exclusive rights to terms or designs that others may need to use to describe or show their goods or services in the marketplace.  See Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 1560, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991); In re Aug. Storck KG, 218 USPQ 823, 825 (TTAB 1983).  A disclaimer does not affect the appearance of the mark; that is, a disclaimer does not physically remove the disclaimed matter from the mark.  TMEP §§1213, 1213.10. 

 

If applicant does not provide the required disclaimer, the USPTO may refuse to register the entire mark.  See In re Stereotaxis Inc., 429 F.3d 1039, 1041, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005); TMEP §1213.01(b).

 

Applicant should submit a disclaimer in the following standardized format:

 

No claim is made to the exclusive right to use “SECURITY BAG” apart from the mark as shown.

 

For an overview of disclaimers and instructions on how to satisfy this disclaimer requirement using the Trademark Electronic Application System (TEAS) form, please go to http://www.uspto.gov/trademarks/law/disclaimer.jsp.

 

Section 2(f) Claim

Applicant claims that the applied-for mark has acquired distinctiveness under Trademark Act Section 2(f); however, this claim is unnecessary because the mark appears to be inherently distinctive and is eligible for registration on the Principal Register without proof of acquired distinctiveness.  See 15 U.S.C. §1052(f); TMEP §1212.02(d). 

 

Applicant may request to withdraw the claim of acquired distinctiveness by instructing the trademark examining attorney to delete it from the application record.  See TMEP §1212.02(d).  If applicant does not withdraw the claim, it will remain in the application record and be printed on the registration certificate.

 

A claim of acquired distinctiveness may be construed as a concession by applicant that the applied-for mark is not inherently distinctive.  In re Reed Elsevier Prop. Inc., 77 USPQ2d 1649, 1652 n.3 (TTAB 2005), aff'd, 482 F.3d 1376, 82 USPQ2d 1378 (Fed. Cir. 2007); see TMEP §1212.02(b).

 

No Conflicting 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.

 

Assistance

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §2.191; TMEP §§709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

 

 

/Alice Benmaman/

Trademark Attorney

Law Office 116

571 272-9126

alice.benmaman@uspto.gov

 

TO RESPOND TO THIS LETTER:  Go to http://www.uspto.gov/trademarks/teas/response_forms.jsp.  Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (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 the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.uspto.gov/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199.  For more information on checking status, see http://www.uspto.gov/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.uspto.gov/trademarks/teas/correspondence.jsp.