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  76/223364

 

The assigned examining attorney has reviewed the applicant’s response and determined the following.

 

Requirement for an acceptable drawing - Material Alteration - FINAL

The requirement for an acceptable drawing which is not a material alteration of applicant’s original drawing is made FINAL.  The applicant has now amended the drawing to a typed drawing of the words HOT GROOVES.  The proposed amendment of the drawing is unacceptable because it would materially alter the character of the mark.  37 C.F.R. Section 2.72(a); TMEP section 807.14(a).  See In re Wine Society of America, Inc., 12 USPQ2d 1139 (TTAB 1989); In re Nationwide Industries Inc., 6 USPQ2d 1883 (TTAB 1988); In re Pierce Foods Corp, 230 USPQ 307 (TTAB 1986).

 

The general test of whether alterations are material is whether, if the mark were a published mark in an application to register, the change would require republication in order to present the mark fairly for purposes of opposition.  If the proposed amendment to the registered mark would render it sufficiently different as to require republication, it would be tantamount to a new mark appropriate for a new application.

 

In order to apply the test, it is necessary to consider the nature of alterations which are permissible.  The modified mark must contain what is the essence of the original mark (i.e., the mark as originally registered), and the new form must create the impression of being essentially the same mark.  For example, in marks consisting of words combined with surrounding design, if the word is the essence of the mark and the design is merely background embellishment or display, not integrated into the mark in any significant way, the removal or change of the design will not be a material alteration of the mark.  See In re Umax Data System, Inc., 40 USPQ2d1539 (Comm'r Pats. 1996); Ex parte Petersen & Pegau Baking Co., 100 USPQ 20 (Comm'r Pats. 1953).  On the other hand, if a design is integrated into a mark and is a distinctive feature necessary for recognition of the mark, then a change in the design would materially alter the mark.  See In re Dillard Department Stores, Inc., 33 USPQ2d 1052 (Comm'r Pats. 1993) (proposed deletion of highly stylized display features of mark "IN•VEST•MENTS" held to be a material alteration); Ex parte Kadane-Brown, Inc., 79 USPQ 307 (Comm'r Pats. 1948) (proposed amendment of "BLUE BONNET" mark to delete a star design and to change the picture of the girl held a material alteration).

 

 In this case, the design in the original drawing is integrated into the mark and is a distinctive feature necessary for recognition of the mark.  Thus, applicant’s change which deleted the design materially alters the mark.  Applicant’s third amended drawing changes the mark from HOT GROOVES and design to a typed drawing of HOT GROOVES.  Applicant’s second amended drawing changes the mark from HOT GROOVES and design which portrays the “O” in HOT in the form of a circular record design to HOT GROOVES and a design in which a record is on top of the wording HOT GROOVES and appears in an elongated oval shape instead of a circle.  Both of the proposed amendments of the drawing are unacceptable because the amendments would materially alter the character of the mark.  37 C.F.R. Section 2.72(a); TMEP section 807.14(a).  See In re Wine Society of America, Inc., 12 USPQ2d 1139 (TTAB 1989); In re Nationwide Industries Inc., 6 USPQ2d 1883 (TTAB 1988); In re Pierce Foods Corp, 230 USPQ 307 (TTAB 1986).

 

Accordingly, the drawing is a material alteration and remains unacceptable.

 

Special-Form Drawing - Requirements

The heading must list, on separate lines, the applicant's complete name; the applicant's address; the goods or services recited in the application; and, if the application is filed under Section 1(a) of the Act, the dates of first use of the mark and of first use of the mark in commerce; or, if the application is filed under Section 44(d), the priority filing date of the foreign application.

 

The requirements for a special‑form drawing, in addition to the heading, are as follows.

 

            (1) The drawing must appear in black and white; no color is permitted.

 

            (2)  Every line and letter must be black and clear.

 

            (3)  The use of gray to indicate shading is unacceptable.

 

            (4)  The lining must not be too fine or too close together.

 

(5)  The preferred size of the area in which the mark is displayed is 2 1/2 inches (6.1 cm.) high and 2 1/2 inches (6.1 cm.) wide.  In no case may it be larger than 4 inches (10.3 cm.) high or 4 inches (10.3 cm.) wide.

 

            (6)  If the reduction of the mark to the required size renders any details illegible, the applicant may insert a statement in the application to describe the mark and these details.

 

37 C.F.R. Sections 2.51 and 2.52; TMEP section 807.05.  The Office will enforce these drawing requirements strictly.  TMEP section 807.

 

The requirement for an acceptable drawing is made FINAL.

 

/Carol Spils/

Carol Spils

Examining Attorney

Law Office 105

(703)308-9105 ext. 154

ecom105@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.