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  76/265562

 

                                                Statement of Use Unacceptable

 

The statement of use is unacceptable because the specimen shows ornamental, rather than trademark usage of the proposed mark.

 

Sections 1,2 and 45 - Ornamentation Refusal

 

Registration is refused on the Principal Register because the proposed mark, as used on the specimen of record, is a decorative or ornamental feature of the goods and would not be perceived as a mark by the purchasing public.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051, 1052 and 1127; See In re Owens‑Corning Fiberglass Corp., 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985); In re David Crystal, Inc., 296 F.2d 771, 132 USPQ 1 (C.C.P.A. 1961); In re Villeroy & Boch S.A.R.L., 5 USPQ2d 1451 (TTAB 1987); TMEP §§1202.03 et seq.

 

The specimen consists of a sticker, and the proposed mark is ornamental as used on the specimen because it is the only phrase appearing on the sticker.  Rather than being a trademark for stickers, the wording appears to be the message the sticker was intended to convey.

 

In connection with wording that is ornamental, “the size, location, dominance, and significance of the alleged mark as applied to the goods” are all relevant factors to consider in determining whether the proposed mark is inherently distinctive.  In re Astro Gods Inc., 223 USPQ 621, 623 (TTAB 1984); See In re Pro-Line Corp., 28 USPQ2d 1141 (TTAB 1993).

 

As to the size of the proposed mark appearing on the specimens, the larger the display relative to the size of the goods, the more likely that consumers will not view the ornamental matter as a mark.  See, e.g., In re Dimitri’s Inc., 9 USPQ2d 1666, 1667 (TTAB 1988) (SUMO merely ornamental in part because the wording “appears in large lettering across the top-center portion of the T-shirts and caps”); International Order of Job’s Daughters v. Lindberg and Co., 633 F.2d 912, 208 USPQ 718 (9^th Cir. 1980), cert denied 452 U.S. 941 (1982) (prominent display on jewelry was evidence that the proposed mark was being used in a non-trademark fashion).

 

Although there is no prescribed method or place for affixation of a mark to goods, the location of a mark on the goods “is part of the environment in which the [mark] is perceived by the public and … may influence how [the mark] is perceived.”  See, e.g., In re Paramount Pictures Corp., 213 USPQ 1111, 1115 (TTAB 1982); In re Tilcon Warren Inc., 221 USPQ 86, 88 (TTAB 1984).  Thus, where consumers have been conditioned to recognize trademarks in a certain location, as on the breast area of a shirt, ornamental matter placed in a different location is less likely to be perceived as an indication of source.  See TMEP §1202.03(b)

 

Applicant may overcome the stated ornamental refusal by doing one of the following, as appropriate:

 

(1)   submitting evidence that the proposed mark has acquired distinctiveness of the applicant’s goods in commerce under Trademark Act Section 2(f), 15 U.S.C. §1052(f).  Evidence may consist of examples of advertising and promotional materials that specifically promote the subject matter for which registration is sought as a mark, dollar figures for advertising devoted to such promotion, dealer and consumer statements of recognition of the subject matter as a mark and any other evidence that establishes recognition of the matter as a mark for the goods.  See TMEP §1202.03(d); or

 

(2)   submitting evidence that the proposed mark is an indicator of secondary source or sponsorship for the identified goods.  University Book Store v. University of Wisconsin Board of Regents, 33 USPQ2d 1385, 1405 (TTAB 1994); In re Olin Corp., 181 USPQ 182 (TTAB 1982).  That is, applicant may submit evidence showing that the proposed mark would be recognized as a trademark or service mark through applicant’s use of the proposed mark with goods or services other than those identified here.  In re Original Red Plate Co., 223 USPQ 836, 837 (TTAB 1984).  Applicant must establish that, as a result of this use on other goods or services, the public would recognize applicant as the secondary source of, or sponsor for, the identified goods.  See TMEP §1202.03(c); or

 

(3)   submitting a substitute specimen that shows proper non-ornamental trademark use, along with a statement that “the substitute specimen was in use in commerce prior to the expiration of time allowed to applicant for filing a statement of use”, verified with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20.  37 C.F.R. 2.59(b)(2); or

 

(4)   amending the application to seek registration on the Supplemental Register. Trademark Act Section 23, 15 U.S.C. §1091; 37 C.F.R. §§2.47 and 2.75(a); TMEP §§801.02(b), 815 and 816 et seq.

 

 

 

 

 

 

NOTICE:  FEE CHANGE   

 

Effective January 31, 2005 and pursuant to the Consolidated Appropriations Act, 2005, Pub. L. 108-447, the following are the fees that will be charged for filing a trademark application:

 

(1) $325 per international class if filed electronically using the Trademark Electronic Application System (TEAS); or 

 

(2)   $375 per international class if filed on paper

 

These fees will be charged not only when a new application is filed, but also when payments are made to add classes to an existing application. If such payments are submitted with a TEAS response, the fee will be  $325 per class, and if such payments are made with a paper response, the fee will be $375 per class.

 

The new fee requirements will apply to any fees filed on or after January 31, 2005.

 

NOTICE:  TRADEMARK OPERATION RELOCATION

 

The Trademark Operation has relocated to Alexandria, Virginia.  Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:

 

Commissioner for Trademarks

P.O. Box 1451

Alexandria, VA  22313-1451

 

Applicants, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at http://www.gov.uspto.report/teas/index.html.

 

 

Doritt Carroll

Trademark Examining Attorney

Phone:  (571) 272-9138

Fax:  (571) 273-9138

www.gov.uspto.report/teas/index.html

 

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action issued via email you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above and include the serial number, law office number and examining attorney’s name in your response.

 

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

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

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