Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. 

 

 

Serial Number  76/143014

 

This letter responds to the applicant's communication filed on July 15, 2003.  The applicant responded to the refusal to register the mark with arguments in support of registration.  The examining attorney has carefully considered the remarks, but has found them to be unpersuasive.  As such, the refusal under Sections 1, 2 and 45 of the Trademark Act and the requirement for a drawing that matches the specimen are continued and made final.

 

Final Refusal ~ Failure To Function As A Mark

 

The proposed mark consists of a rectangular whirlpool design.  It appears on the specimens as background to a picture of a large toothbrush head with droplets of water scattering around it, along with a picture of the whole toothbrush and stand.  This whirlpool background forms approximately two-thirds of the side of the box for the goods, and is not distinguished by a trademark designation.  Further, the trademark claim on the bottom of the package makes no mention of the whirlpool background. 

 

The examining attorney refused registration because the proposed mark does not function as a trademark.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. Sections 1051, 1052 and 1127.  The proposed mark neither identifies nor distinguishes the goods of the applicant from those of others nor indicates their source.  In Re Remington Products Inc., 3 USPQ2d 1714 (TTAB 1987).

 

To determine whether a term is being used as a trademark, the examining attorney must consider the specimens of record, together with any other evidence submitted with the application.  In re Bose Corp., 546 F.2d 893, 192 USPQ 213 (CCPA 1976); In re Restonic Corp., 189 USPQ 248 (TTAB 1975).  Not all words, designs, symbols or slogans used in the sale or advertising of goods or services function as trademarks, regardless of the applicant's intent.  A term does not function as a trademark unless it is used in a manner that clearly projects to purchasers a single source of the goods or services.  In re Morganroth, 208 USPQ 284 (TTAB 1980).  In the current case, the whirlpool design is simply an ornamental background.  It does not function as a source-identifier for the applicant’s good’s because the design is not set apart or featured in a way so that it stands out from the package or is noticed separate and apart from its function as a background design for the toothbrush head and toothbrush with stand.  The toothbrush head and toothbrush with stand is superimposed over the design in two instances, with flecks of water that radiate outward from the toothbrush head.  These aspects serve to dilute the impact of the design of the whirlpool pool, and render it less important on the overall package. 

 

The applicant states that the design of the whirlpool “is separate both in an intellectual concept and visual impression from a superimposed toothbrush with flecks of water”.  While the concept that the background is separable from the toothbrush is possible, the likelihood of it happening is not.  A consumer cannot be expected to parse a package design to determine the trademark.  A trademark that functions as a source-identifier is not one that needs to be scrutinized by the consumer.  Trademarks, by their very definition, identify source.  The background design merely decorates the package of the goods in an ornamental fashion.  As such, registration is refused because the whirlpool background fails to function as a mark.

 

New Drawing

 

The drawing of the mark shows a simple whirlpool design in a rectangular shape.  It appears on the product packaging as the background to two toothbrush pictures, one with water droplets spraying outward from it.  As such, the drawing and the specimen do not match.  The toothbrush pictures are superimposed over the background, rendering them inseparable. 

 

The applicant cannot amend the drawing to conform to the display on the specimen because the character of the mark would be materially altered.  37 C.F.R. §2.72(b); TMEP §§807.14, 807.14(a) and 807.14(a)(i).

 

Therefore, the applicant must submit a substitute specimen that shows use of the mark as it appears on the drawing.  37 C.F.R. §2.51; TMEP §807.14.  The applicant must verify, with an affidavit or a declaration under 37 C.F.R. §2.20, that the substitute specimen was in use in commerce prior to the expiration of the time allowed to the applicant for filing a statement of use.  37 C.F.R. §§2.59(b) and 2.72(b); TMEP §904.09.  This requirement is continued and made final.

 

                                                          /Susan Leslie DuBois/

Susan Leslie DuBois

Examining Attorney

Law Office 111

703-308-9111 ext.413

EMAIL: ecom111@uspto.gov

 

 

How to respond to this Office Action:

 

To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.

 

To respond formally via E-mail, visit http://www.gov.uspto.report/web/trademarks/tmelecresp.htm and follow the instructions.

 

To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.

 

To check the status of your application at any time, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.gov.uspto.report/

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.