To: | Midwest Industrial Supply, Inc. (iplaw@etblaw.com) |
Subject: | U.S. Trademark Application Serial No. 88676684 - MANAGED SERVICE PROGRAM - 40910.50191 |
Sent: | December 02, 2019 11:29:04 AM |
Sent As: | ecom107@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88676684
Mark: MANAGED SERVICE PROGRAM
|
|
Correspondence Address:
|
|
Applicant: Midwest Industrial Supply, Inc.
|
|
Reference/Docket No. 40910.50191
Correspondence Email Address: |
|
NONFINAL OFFICE ACTION
The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: December 02, 2019
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).
However, applicant should note the following grounds for refusal.
SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
The proposed mark is MANAGED SERVICE PROGRAM for “Consulting and programming services in the field of environmental assessment and planning; Technological consultation and programming in the technology field of dust control, road stability, chemical application, and site evaluation; Consulting and programming services in the field of designing dust control systems, road stability programs, chemical application amounts, and site evaluations.”
The words in the mark are defined as follows:
MANAGE—to exercise executive, administrative, and supervisory direction of
SERVICE—useful labor that does not produce a tangible commodity
PROGRAM—a plan or system under which action may be taken toward a goal
See the attached definitions from Merriam-Webster's Online Dictionary, 11th Edition.
The wording “MANAGED SERVICE PROGRAM” describes applicant’s services which feature a plan or system under which dust control related labor is administered or supervised. The applicant’s website shows that applicant provides a program to assist companies in managing various processes involving dust control. Please see the attached, available at http://midwestind.com/managed-services/.
“Whether consumers could guess what the product [or service] is from consideration of the mark alone is not the test.” In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
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 re Positec Grp. Ltd., 108 USPQ2d 1161, 1162-63 (TTAB 2013).
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 applicant provides a program in which it manages dust control related services for its customers. Accordingly, registration is refused under Section 2(e)(1) of the Trademark Act.
If applicant responds to the refusal, applicant must also respond to the requirement(s) set forth below.
Procedural requirements
Classification and Identification of Services
The wording “programming” in the identification of services is indefinite and must be clarified to further specify the nature, type, or purpose of the programming services because this could refer to services in more than one international class. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Generally, a trademark examining attorney will recommend acceptable substitute wording for unacceptable identifications of goods and/or services. In this case, however, because the nature of the programming services is unclear from the application record, the trademark examining attorney is unable to suggest any alternative wording. See TMEP §1402.01(e).
Applicant must also clarify the wording “Consulting and programming services in the field of … road stability programs, chemical application amounts, and site evaluations” to specify what is being designed.
Applicant may substitute the following wording, if accurate:
Class 42 Consulting in the field of environmental assessment and planning; Technological consultation in the technology fields of dust control, road stability, chemical application, and site evaluation; Consulting in the field of designing dust control systems, designing road stability programs, and engineering design in relation to chemical application amounts and site evaluations
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.
How to respond. Click to file a response to this nonfinal Office action.
/Yatsye I. Lee/
Trademark Examining Attorney
Law Office 107
Phone: 571-272-3897
yatsye.lee@uspto.gov (for informal inquiries)
RESPONSE GUIDANCE