TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.
ISSUE/MAILING DATE: 1/11/2010
The assigned trademark examining attorney has reviewed the referenced application and has determined the following:
NO CONFLICTING REGISTRATIONS
The Office records have been searched and no similar registered or pending mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02
THE DESCRIPTION OF SERVICES IS UNACCEPTABLE
The wording of the identification of services is indefinite and must be clarified because it fails to give proper notice as to the specific services for which applicant seeks its service mark. See TMEP §1402.01. Applicant must amend this wording to specify the common commercial or generic name for the services. If there is no common commercial or generic name for the services, then applicant must describe the nature of the services as well as their main purpose, channels of trade, and the intended consumer(s).
Furthermore, “Association services, namely promoting the interests of…”is meant to refer to people, groups of people, professional groups or categories, e.g., bird lovers, gynecologists, librarians, economists, social climbers, endangered novelists, Presbyterian ministers, isolationists, and the like. An “alternative social sustainability and design” would not appear to have any human physiology, anatomy or autonomous mobility, and is most likely not a human being but rather an economic model of some sort.
Applicant must amend the services description to perhaps furthering the interest of the believers, followers, or adherents who favor a resource based socio-economic design or model.
Identifications of services can be amended 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. Therefore, applicant may not amend the identification to include services that are not within the scope of the services set forth in the present identification.
For assistance with identifying and classifying services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.uspto.gov/netahtml/tidm.html. See TMEP §1402.04.
THE MARK IS MERELY DESCRIPTIVE
Registration is refused because the applied-for mark merely describes a quality, characteristic, function, feature, purpose or use of the specified 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).
Descriptiveness Determined in Relation to Services
The determination of whether a mark is merely descriptive is considered in relation to the identified 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).
Not Necessary to Describe All Attributes of the Services
“A mark may be merely descriptive even if it does not describe the ‘full scope and extent’ of the applicant’s services.” In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004) (citing In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1346, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001)); TMEP §1209.01(b). It is enough if the term describes only one significant function, attribute or property. In re Oppedahl, 373 F.3d at 1173, 71 USPQ2d at 1371; TMEP §1209.01(b).
First or Only User of Descriptive Term
The fact that an applicant may be one of the first users of a merely descriptive designation is not dispositive on the issue of descriptiveness where, as here, the evidence shows that the word or term is merely descriptive. See In re Sun Microsystems, Inc., 59 USPQ2d 1084, 1087 (TTAB 2001); In re Acuson, 225 USPQ 790, 792 (TTAB 1985); TMEP §1209.03(c).
Why Applicant’s Mark is Deemed Merely Descriptive for Applicant’s Services
Applicant seeks to register on the Principal Register the designation, “RESOURCE BASED ECONOMY” for services incorrectly set forth as “Association services, namely, promoting the interests of alternative social sustainability and design.” However, it appears that the proposed mark “RESOURCE BASED ECONOMY” is a pre-existing phrase in the socio-economic literature discussing economic models, a pre-existing phrase with a fairly widely known meaning.
What is the plain-language meaning of the phrase? “RESOURCE” is defined in the Merriam-Webster online dictionary, excerpt attached hereto, as follows: “a natural source of wealth or revenue” or “a natural feature or phenomenon that enhances the quality of human life.” “BASE[D]” is defined in the Merriam-Webster online dictionary, excerpt attached hereto, as follows: “to serve as a base for” or “find a basis for.” “ECONOMY” is defined in the Merriam-Webster online dictionary, excerpt attached hereto, as follows: “the structure or conditions of economic life in a country, area or period; also an economic system.”
Thus it would appear, without going beyond the plain-language definitions of the words in the mark that a plausible meaning might be paraphrase as “An economic system based upon natural wealth phenomena that serves to enhance the quality of human life.”
Reading applicant’s specimen of use, entitled “RESOURCE BASED ECONOMY” it further appears that the resources contemplated as a basis for a stellar economy are any and all resources but money, credits, barter “or any other system of debt or servitude.” So the medium of exchange is removed from the economics of human and societal life, thereby setting the stage for existing resources from the land and sea, physical equipment, industrial plants etc. With our access to technology, and an attitude of willingness to share and work, everyone might be able to enjoy a very high standard of living with “all of the amenities of a high technological society.”
A “RESOURCE BASED ECONOMY” is presented as an alternative to a money-based economy.
It describes what may be a socio-economic “movement” or “cause”, as applicant describes it in the services description, an “alternative social sustainability and design.” As such, it appears to be the content of the economic theory, or design or model or system that relies on “resources” other than and rather than money.
Applicant will note the attached evidence that “RESOURCE BASED ECONOMY” is a phrase that’s been utilized to describe applicant’s alternative moneyless economy by others; a phrase whose meaning is so widely known that there are passionate arguments for and against it all over the Internet. Further there are learned International scholarly papers on the subject, see Ruger Ahrend’s “How to Sustain Growth in a Resource Based Economy?” The Main Concepts and their Application to the Russian Case. United Nations Discussion Paper Series No. 2005.3, October 2005. Attached also are a sampling from ten pages of Google “hits” for the phrase “RESOURCE BASED ECONOMY.” The phrase was original to the applicant from about 1969. It was descriptive for his economic model and remains descriptive of it.
Two major reasons for not protecting descriptive marks are (1) to prevent the owner of a descriptive mark from inhibiting competition in the marketplace and (2) to avoid the possibility of costly infringement suits brought by the service mark owner. In re Abcor Dev. Corp., 588 F.2d 811, 813, 200 USPQ 215, 217 (C.C.P.A. 1978); TMEP §1209. Businesses and competitors should be free to use descriptive language when describing their own services to the public in advertising and marketing materials. See In re Styleclick.com Inc., 58 USPQ2d 1523, 1527 (TTAB 2001).
THE MARK IDENTIFIES A SYSTEM
Registration is refused because the applied-for mark, as used on the specimen of record, merely identifies a process or system; it does not function as a service mark to identify and distinguish applicant’s services from those of others and to indicate the source of applicant’s services. Trademark Act Sections 1, 2, 3 and 45, 15 U.S.C. §§1051-1053, 1127; see In re Universal Oil Prods. Co., 476 F.2d 653, 655-56, 177 USPQ 456, 457 (C.C.P.A. 1973) (holding the wording PACOL and PENEX, as used on the specimens, are the names of a direct catalytic dehydrogenation process and a continuous catalytic isomerization process, and do not identify “research, development, evaluation, market and economic studies, consultation, design, engineering, and technical services” performed in connection with the identified processes); TMEP §§904.07(b), 1301.02(e).
A process or system is a way of doing something, and is not generally a service. Thus the name of a process or system does not function as a service mark unless it is also used to indicate the source of the services in the application. In re Hughes Aircraft Co., 222 USPQ 263, 264 (TTAB 1984); TMEP §1301.02(e).
Determining whether matter functions solely as the name of a process or system and also as a service mark is based on the manner in which the applied-for mark is used on the specimen and any other information of record pertaining to use of the mark. In re Hughes Aircraft, 222 USPQ at 264; TMEP §1301.02(e). In this case, the specimen shows the applied-for mark used solely to identify a process or system because the specimen so states, as follows: “A Resource-Based Economy is a system in which all goods and services are available without the use of money, credits, barter or any other system of debt or servitude. All resources become the common heritage of all the inhabitants, just a select few. The premise on which this system is based in that the Earth is abundant with plentiful resource; our practice of rationing resources through monetary methods is irrelevant and counter productive to our survival.”
Clearly the author, who is the applicant, considers the “RESOURCE BASED ECONOMY” a system, having so written in defining it.
INFORMAL COMMUNICATIONS
The most expeditious way to solve disclaimer or goods or services description issues is by informal E-mail or voicemail. The following personal contact information is for applicant’s convenience, for trial runs, discussions or solutions involving examiner’s amendments.
