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mkx · 07-22-2005, 12:30 AM

Anyone here know the best way to deal with a denied trademark application? I rather not post the mark being applied for.

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SEARCH OF THE RECORDS

The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d). TMEP section 1105.01.

MERE DESCRIPTIVENESS

The examining attorney refuses registration on the Principal Register because the proposed mark merely describes the applicant?s services. Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1); TMEP section 1209 et seq.

A mark is merely descriptive under Trademark Act Section 2(e)(1), 15 U.S.C. 1052(e)(1), if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant services. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re MetPath Inc., 223 USPQ 88 (TTAB 1984); In re Brighthahaha8209;Crest, Ltd., 204 USPQ 591 (TTAB 1979); TMEP section 1209.01(b).

The term merely describes a feature, characteristic or purpose of the applicant?s services. The mark immediately names the exact nature and purpose of the services. Accordingly, the mark is refused registration on the Principal Register under Section 2(e)(1).

Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

REQUIREMENT FOR INFORMATION

The examining attorney requires information about the services to determine whether all or part of the mark is merely descriptive as applied to the services. TMEP section 814. The applicant must provide information for the services. This may take the form of a fact sheet, brochures, or advertising materials. If unavailable, the applicant should submit the information for services of the same type, explaining how its own services will differ. If the services feature new technology and no competing services are available, the applicant must provide a detailed factual description of the services.

In all cases, the submitted factual information must make clear what the services include, its salient features, and its prospective customer and/or channel of trade. This information is not readily available to the examining attorney, and is pertinent to the descriptiveness determination.

Trademark Rule 2.61(b) states "The examiner may require the applicant to furnish such information and exhibits as may be reasonably necessary to the proper examination of the application". The Trademark Trial and Appeal Board has upheld a refusal of registration based on the applicant's failure to provide information requested under this rule. In re Babies Beat Inc., 13 USPQ2d 1729 (TTAB 1990)(failure to submit patent information regarding configuration).

07-22-2005, 12:30 AM
mkx Confirmed User Industry Role: Join Date: Nov 2003 Location: Toronto Posts: 4,001	Trademark application denied. Anyone here know the best way to deal with a denied trademark application? I rather not post the mark being applied for. ::: SEARCH OF THE RECORDS The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d). TMEP section 1105.01. MERE DESCRIPTIVENESS The examining attorney refuses registration on the Principal Register because the proposed mark merely describes the applicant?s services. Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1); TMEP section 1209 et seq. A mark is merely descriptive under Trademark Act Section 2(e)(1), 15 U.S.C. 1052(e)(1), if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant services. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re MetPath Inc., 223 USPQ 88 (TTAB 1984); In re Brighthahaha8209;Crest, Ltd., 204 USPQ 591 (TTAB 1979); TMEP section 1209.01(b). The term merely describes a feature, characteristic or purpose of the applicant?s services. The mark immediately names the exact nature and purpose of the services. Accordingly, the mark is refused registration on the Principal Register under Section 2(e)(1). Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration. REQUIREMENT FOR INFORMATION The examining attorney requires information about the services to determine whether all or part of the mark is merely descriptive as applied to the services. TMEP section 814. The applicant must provide information for the services. This may take the form of a fact sheet, brochures, or advertising materials. If unavailable, the applicant should submit the information for services of the same type, explaining how its own services will differ. If the services feature new technology and no competing services are available, the applicant must provide a detailed factual description of the services. In all cases, the submitted factual information must make clear what the services include, its salient features, and its prospective customer and/or channel of trade. This information is not readily available to the examining attorney, and is pertinent to the descriptiveness determination. Trademark Rule 2.61(b) states "The examiner may require the applicant to furnish such information and exhibits as may be reasonably necessary to the proper examination of the application". The Trademark Trial and Appeal Board has upheld a refusal of registration based on the applicant's failure to provide information requested under this rule. In re Babies Beat Inc., 13 USPQ2d 1729 (TTAB 1990)(failure to submit patent information regarding configuration).