| To: | Ideastream (smoskowitz@ulmer.com) |
| Subject: | TRADEMARK APPLICATION NO. 76292414 - IDEASTREAM - 24464-0000 |
| Sent: | 9/26/07 1:06:51 PM |
| Sent As: | ECOM103@USPTO.GOV |
| Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/292414
MARK: IDEASTREAM
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CORRESPONDENT ADDRESS: |
RESPOND TO THIS ACTION: http://www.gov.uspto.report/teas/eTEASpageD.htm
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/main/trademarks.htm
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APPLICANT: Ideastream
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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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: 9/26/2007
This letter responds to the Statement of Use filed on August 17, 2007 (hereinafter, “SOU”).
The assigned trademark examining attorney has reviewed the statement of use and has determined that the following refusals and requirements must issue:
specimen unacceptable – TEAS Specimen Unprintable or Illegible
THIS REFUSAL APPLIES TO CLASS 009 ONLY
The specimen for goods classified in International Class 009 is not acceptable because the digitized image cannot be printed or did not print legibly due to technical difficulties and does not clearly show the applied-for mark in use in commerce for the identified goods. The examining attorney attempted to enlarge the specimen image, however enlarging the image only made the image more blurred. A statement of use must include a specimen showing the applied-for mark in use in commerce for each class of goods and/or services in the statement of use. Trademark Act Sections 1, 2, 3 and 45, 15 U.S.C. §§1051-1053 and 1127; 37 C.F.R. §§2.56 and 2.88(b)(2); TMEP §§904 and 1109.09(b).
Therefore, applicant must satisfy one of the following:
(1) Submit a true copy of the originally submitted specimen and a statement by the person who transmitted the statement of use that the resubmitted specimen is a true copy of the specimen that was submitted with the statement of use. TMEP §904.02.
(2) Submit a substitute specimen showing use of the mark for each class of goods and/or services in the statement of use, and the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “The substitute specimen was in use in commerce prior to the expiration of the time allowed applicant for filing a statement of use.” 37 C.F.R. §2.59(b)(2); TMEP §904.09. If submitting a specimen requires an amendment to the dates of use, applicant must also verify the amended dates. 37 C.F.R. §2.71(c).
Examples of specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the goods or packaging, or displays associated with the goods at their point of sale. TMEP §§904.04 et seq.
The following is a sample declaration under 37 C.F.R. §2.20 with a supporting statement for a substitute specimen:
The undersigned being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements and the like may jeopardize the validity of the application or document or any registration resulting there from, declares that the substitute specimen was in use in commerce prior to the expiration of the time allowed applicant for filing a statement of use; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.
_____________________________
(Signature)
_____________________________
(Print or Type Name and Position)
_____________________________
(Date)
Pending a proper response, registration is refused because applicant has not provided evidence of use in commerce of the applied-for mark. 15 U.S.C. §§1051-1053 and 1127; 37 C.F.R. §§2.34(a)(1)(iv) and 2.56; TMEP §904.
Applicant may not withdraw the statement of use. 37 C.F.R. §2.88(g); TMEP §1109.17.
The stated refusal refers to Class 009 only and does not bar registration in the other class.
Applicant may respond to the stated refusal by doing one of the following:
(1) deleting the class to which the refusal pertains;
(2) arguing against the refusal of the combined application as a whole; or
(3) filing a request to divide out the goods or services that have not been refused registration, so that the mark may be published for opposition in the class to which the refusal does not pertain (See 37 C.F.R. §2.87 and TMEP §§1110.05 and 1403.03 regarding the requirements for filing a request to divide).
Although the trademark examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
Applicant should note the following additional ground for refusal.
THIS REFUSAL APPLIES TO CLASS 021 ONLY.
Registration is refused on the Principal Register because the proposed mark, as used on the specimen of record submitted for the goods classified in International Class 021, is merely a decorative or ornamental feature of the goods; it does not function as a trademark to identify and distinguish applicant’s goods from those of others and to indicate their source. 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 proposed mark, as used on the specimen submitted for the goods classified in International Class 021, is merely ornamental because the large size and prominent placement of the mark as shown on the identified goods functions as a decorative design on the goods, not a trademark; specifically, the mark appears on the side of a mug, which is commonly the location for designs or other ornamental matter on mugs, as opposed to the bottom foot of a mug, which is a location more commonly used to feature a trademark for goods.
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 Pro-Line Corp., 28 USPQ2d 1141, 1142 (TTAB 1993); In re Astro-Gods Inc., 223 USPQ 621, 623 (TTAB 1984).
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 (9th 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.” In re Tilcon Warren Inc., 221 USPQ 86, 88 (TTAB 1984); see In re Paramount Pictures Corp., 213 USPQ 1111, 1115 (TTAB 1982). 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 respond to the stated ornamental refusal by satisfying one of the following, as appropriate:
(1) Claiming acquired distinctiveness by submitting evidence that the proposed mark has become distinctive of applicant’s goods in commerce. 15 U.S.C. §1052(f). Evidence may consist of examples of advertising and promotional materials that specifically promote, as a trademark, the mark for which registration is sought; dollar figures for advertising devoted to such promotion; dealer and consumer statements of recognition of the proposed mark as a trademark; and any other evidence that establishes recognition of the proposed mark as a trademark for the goods. TMEP §1212.06 et seq;
(2) Submitting evidence that the proposed mark is an indicator of secondary source or sponsorship for the identified goods. Univ. Book Store v. Univ. of Wis. Bd. 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 through applicant’s use of the mark with goods or services other than those identified here. In re The Original Red Plate Co., 223 USPQ 836, 837 (TTAB 1984). Applicant must establish that, as a result of this use in connection with 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);
(3) 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.;
(4) Submitting a substitute specimen that shows non-ornamental trademark use, and the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “The substitute specimen was in use in commerce prior to the expiration of time allowed to applicant for filing a statement of use.” 37 C.F.R. §2.59(b)(2). If submitting a substitute specimen requires amendment to the dates of use, applicant must also verify the amended dates. 37 C.F.R. §2.71(c). Applicant should note the requirements for submitting a substitute specimen, as indicated in the above section “SPECIMEN UNACCEPTABLE – TEAS SPECIMEN UNPRINTABLE OR ILLEGIBLE”.
The stated refusal refers to Class 021 only and does not bar registration in the other class.
Applicant may respond to the stated refusal by doing one of the following:
Although the trademark examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
Applicant should note the following additional ground for refusal.
specimen unacceptable - does not show use of mark with specified services
THIS REFUSAL APPLIES TO CLASSES 035 and 042 ONLY.
The specimen submitted for the services classified in International Classes 035 and 042 are not acceptable because it does not show the applied-for mark used in connection with any of the services specified in the statement of use. A statement of use must include a specimen showing the applied-for mark in use in commerce for each class of services in the statement of use. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051 and 1127; 37 C.F.R. §§2.56 and 2.88(b)(2); TMEP §§904 and 1109.09(b).
In the present case, the specimen for class 035 services shows use of the applied for mark in connection with a computer database in the field of education and educational subject matter; however, the identified services are: “Business services, namely, facilities management of technical operations; providing facilities for the use of office equipment and machinery; production and distribution of commercials and infomercials for others; providing facilities for business meetings; providing an online computer database with multiple categories of information for use in the field of strategic business planning and market insight, available to service subscribers”, and the submitted specimen of use does not show the database “for use in the field of strategic business planning and market insight, available to service subscribers”.
Additionally, in the present case, the specimen for class 042 services shows use of the applied for mark in connection with an invoice for video on demand service; however, the identified services are: “Leasing of computer facilities for others containing computer equipment and also featuring computer consulting services to integrate technology into the process of strategic business planning, market insight, and new product development, and to facilitate brainstorming sessions among managers and their customers; providing an online computer database with multiple categories of information for use in the field of new product development, available to service subscribers”, and the submitted specimen of use does not show use of the applied for mark with any of these identified services.
Therefore, applicant must submit the following:
(1) A substitute specimen showing use of the mark for each class of services in the statement of use; and
(2) The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “The substitute specimen was in use in commerce prior to the expiration of the time allowed applicant for filing a statement of use.” 37 C.F.R. §2.59(b)(2); TMEP §904.09. If submitting a specimen requires an amendment to the dates of use, applicant must also verify the amended dates. 37 C.F.R. §2.71(c).
Examples of specimens for services are signs, photographs, brochures, website printouts or advertisements that show the mark used in the sale or advertising of the services. TMEP §§1301.04 et seq.
Applicant should note the requirements for submitting a substitute specimen, as indicated in the above section “SPECIMEN UNACCEPTABLE – TEAS SPECIMEN UNPRINTABLE OR ILLEGIBLE”.
Pending a proper response, registration is refused because the specimen does not show the applied-for mark in use in commerce as a trademark or service mark for the identified goods or services. 15 U.S.C. §§1051 and 1127; 37 C.F.R. §§2.56 and 2.88.
Applicant may not withdraw the statement of use. 37 C.F.R. §2.88(g); TMEP §1109.17.
Although the trademark examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
The stated refusal refers to Classes 035 and 042 only and does not bar registration in the other class.
Applicant may respond to the stated refusal by doing one of the following:
If applicant chooses to respond to the refusal(s) to register, then applicant must also respond to the following requirement.
The application as amended by the assignment of record (for purpose of name change) identifies applicant as a “Nonprofit.” This is not an acceptable entity designation because “non-profit” could refer to an organization, a partnership, a corporation, or other entity type. TMEP §803.03.
Therefore, applicant must specify the type of entity applying, e.g., corporation, unincorporated association, partnership or joint venture. 37 C.F.R. §2.32(a)(3); TMEP §§803.03 et seq.
/Kaelie E. Kung/
Trademark Examining Attorney
Law Office 103
571-272-8265
RESPOND TO THIS ACTION: If there are any questions about the Office action, please contact the assigned examining attorney. A response to this Office Action should be filed using the Office’s Response to Office action form available at http://www.gov.uspto.report/teas/eTEASpageD.htm. If notification of this Office action was received via e-mail, no response using this form may be filed for 72 hours after receipt of the notification. Do not attempt to respond by e-mail as the USPTO does not accept e-mailed responses.
If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response. Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.
STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov. When conducting an online status check, print and maintain a copy of the complete TARR screen. If the status of your application has not changed for more than six months, please contact the assigned examining attorney.