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  76/303997

 

This letter responds to the applicant's SOU communication filed on  6-2-04.

 

Ornamental Refusal:

 

Registration is refused on the Principal Register because the proposed mark, as used on the specimen of record, is solely decorative or ornamental in nature and would not be perceived as a mark by the purchasing public.  Moreover, because the proposed mark is solely decorative or ornamental, it appears incapable of functioning as a source-identifier for applicant’s goods.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051, 1052 and 1127; Damn I’m Good Inc. v. Sakowitz, Inc., 514 F. Supp. 1357, 212 USPQ 684 (S.D.N.Y. 1981) (DAMN I’M GOOD, inscribed in large letters on bracelets and used on hang tags affixed to the goods, found to be without source-indicating significance); In re Petersen Mfg. Co., 2 USPQ2d 2032 (TTAB 1987) (design representing the rear panel of a container for hand tools held unregistrable as merely ornamental, notwithstanding §2(f) claim); In re Original Red Plate Co., 223 USPQ 836 (TTAB 1984) (YOU ARE SPECIAL TODAY for ceramic plates found to be without any source-indicating significance); In re Tilcon Warren, Inc., 221 USPQ 86 (TTAB 1983) (WATCH THAT CHILD held not to function as a mark for construction material notwithstanding long use, where the only use was on the bumpers of construction vehicles in which the goods were transported); TMEP §§1202.03 et seq.

 

The specimen consists of an oval sticker with the mark across the front of the sticker, and the proposed mark is ornamental as used on the specimen because consumer would not think of the usage as trademark use but as decoration on a sticker.

 

Applicant may overcome the stated ornamental refusal by submitting a substitute specimen that shows proper non-ornamental trademark use, along with a statement that ”the substitute specimen was in use in commerce at least as early as the application filing date”/”the substitute specimen was in use in commerce prior to the filing of the amendment to allege use”/”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(a)/2.59(b)(1)/2.59(b)(2).

 

Declaration:

 

 

The undersigned, being hereby warned that willful false statements and the like so made 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 any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, that the mark is in use in commerce and was in use in commerce on or in connection with the goods or services listed in the application as of the application filing date; that the facts set forth in the application are true and correct; that to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; and that 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)

 

 

 

NOTICE:  TRADEMARK OPERATION RELOCATING OCTOBER AND NOVEMBER  2004

 

The Trademark Operation is relocating to Alexandria, Virginia, in October and November 2004.  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, registration owners, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at www.uspto.gov.

 

 

My Law Office will move on November 1^St.  To reach me by phone after that date call (571) 272- 9316. 

 

To submit a fax response to this Office action after that date, send your response to the Law Office fax number, namely (571) 273-9106.

 

 

 

 

/Lourdes D. Ayala/

Examining Attorney

Law Office 106

703-308-9106 x 225

Fax: 703-746-8106

 

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 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.