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  76/262270

 

Applicant is requesting reconsideration of a final refusal dated July 18, 2002.  Please be advised that after careful consideration of the law and facts of the case, as related to the refusal to register under Trademark Act Section 2(d), 15 U.S.C. 1052(d), the examining attorney must deny the request for reconsideration and adhere to the final action as written since no new facts or reasons have been presented that are significant and compelling with regard to the point at issue.

 

However, with respect to the refusal to register under Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1), the applicant now amends the application to assert a claim of acquired distinctiveness.  As such the applicant has raised a new issue, which is addressed below.  Please be advised that for the reasons below, the descriptive refusal and final refusal are continued.

 

ACQUIRED DISTINCTIVENESS CLAIM

 

The burden of proving that a mark has acquired distinctiveness is on applicant.  See Yamaha Int’l Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001 (Fed. Cir. 1988); In re Meyer & Wenthe, Inc., 267 F.2d 945, 122 USPQ 372 (C.C.P.A. 1959).  Applicant must establish that the purchasing public has come to view the proposed mark as an indicator of origin.  Allegations of sales and advertising expenditures cannot per se establish that a term has acquired significance as a mark.  It is necessary to examine the advertising material to determine how the term is used, the commercial impression created by such use, and the significance the term would have to prospective purchasers.  The ultimate test in determining acquisition of distinctiveness under Trademark Act Section 2(f) is not applicant’s efforts, but applicant’s success in educating the public to associate the claimed mark with a single source.  In re Packaging Specialists, Inc., 221 USPQ 917 (TTAB 1984); Congoleum Corp. v. Armstrong Cork Co., 218 USPQ 528 (TTAB 1983); Bliss & Laughlin Industries Inc. v. Brookstone Co., 209 USPQ 688 (TTAB 1981).

 

In this case, the applicant has claimed acquired distinctiveness based upon continuous and exclusive use of a prior similar application for a different services.  Additional evidence is needed to support the claim of distinctiveness.  Here, the applicant’s allegation of five years’ use alone is insufficient evidence of distinctiveness in this case because the claim relates to a different mark and not the mark in the instant application.  A proposed mark is the “same mark as a previously-registered mark for the purpose of 37 C.F.R. §2.41(b) if it is the “legal equivalent” of such a mark.  A mark is the legal equivalent of another if it creates the same, continuing commercial impression such that the consumer would consider them both the same mark.  In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1347, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001).  See also Bausch & Lomb Inc. v. Leupold & Stevens Inc., 6 USPQ2d 1475, 1477 (TTAB 1988).   TMEP Section 1212.04(b).  In addition, the goods/services are not related.  Here, the goods are described as magazines in the field of jewelry and watches.  As acknowledged by the applicant, the prior application is for arranging and conducting trade shows in the field of jewelry and watches.  Furthermore, Trademark Rule 2.41(b), 37 C.F.R. §2.41(b), states that ownership of a prior registration “on the Principal Register or under the Act of 1905” may be accepted as prima facie evidence of distinctiveness.  TMEP Section 1212.04(d).  However, here, the relied upon application is not a registration.  Finally, with respect to the applicant’s assertion that the use is based upon the statutory suggestion of five years, the affidavit is not sufficient.  Here, the statement indicates that the use was for a slightly different mark and for different services.  The affidavit or declaration should contain a reference to distinctiveness as applied to the applicant’s goods or services, or to use with the applicant’s goods or services, because the distinctiveness created by the five years’ use must relate to the goods or services specified in the application.  TMEP Section 1212.05(d).  Here, this requirement has not been satisfied.

 

The applicant is advised that it must establish acquired distinctiveness by a preponderance of the evidence.  Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001 (Fed. Cir. 1988).  This evidence may include specific dollar sales under the mark, advertising figures, samples of advertising, consumer or dealer statements of recognition of the mark, and any other evidence that establishes the distinctiveness of the mark as an indicator of source.  The Office will decide each case on its own merits.

 

If additional evidence is submitted, the following factors will be considered when assessing its sufficiency:  (1) how long applicant has used the mark; (2) the type and amount of advertising of the mark; and (3) applicant’s efforts to associate the mark with the goods and/or services.  See Ralston Purina Co. v. Thomas J. Lipton, Inc., 341 F. Supp. 129, 173 USPQ 820 (S.D.N.Y. 1972); In re Packaging Specialists, Inc., 221 USPQ 917 (TTAB 1984); 37 C.F.R. §2.41; TMEP §§1212, 1212.01 and 1212.06 et seq.

 

CONCLUSION

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

/IngridCEulin/

Ingrid C. Eulin

Law Office 111

(703) 308-9111 ext 424

(703) 308-7191 fax

(703) 746-8111 alternate fax

 

 

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.