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  76/330591

 

This letter responds to the applicant’s communication filed on January 27, 2003.

 

The applicant’s disclaimer of “HANDCRAFTED GIFT SHOW” is acceptable and made of record.

 

Claim of Section 2(f) in Part – Distinctiveness of Portion of Mark - Acceptable

The examining attorney finds that the applicant’s claim that “BECKMAN’S” has become a distinctive indicator of source for the services, is acceptable and made of record.

 

Claim of Section 2(f) – Entire Mark – Not Acceptable; Section 2(e)(4) Refusal - Continued

The examining attorney has considered the applicant’s arguments carefully but found them unpersuasive.  The examining attorney finds that the applicant’s submitted evidence is insufficient to overcome the refusal under Section 2(e)(4).

 

The examining attorney considered the following principal factors in this decision: (1) how long the applicant has used the mark; (2) the type and amount of advertising of the mark; and (3) the applicant’s efforts to associate the mark with the goods/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.  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. 

 

1. How long the applicant has used the mark:

 

As evidenced in the applicant’s statement that the mark has been in use since September 24, 1999, and the statement by “Randall F. Clark,” the proposed mark, BECKMAN’S HANDCRAFTED GIFT SHOW and design, the applicant has not used the mark for at least five years immediately before the date of this statement.  According to the applicant, the applicant’s predecessor in interest used the mark BECKMAN’S GIFT SHOW (not BECKMAN’S HANDCRAFTED GIFT SHOW) from January 1991 to January 1999, and the mark BECKMAN’S HANDCRAFTED GIFT SHOW from January 1999 to January 2000, while the applicant has used the mark BECKMAN’S HANDCRAFTED GIFT SHOW from January 2000 to the present.

 

2. The type and amount of advertising of the mark:

 

There has been no evidence submitted with respect to the type and amount of advertising of the mark.

 

3. The applicant’s efforts to associate the mark with the services:

 

There has been no evidence submitted with respect to the applicant’s efforts to associate the mark with the services.  The applicant’s declarations from “members of the relevant trade” are  flawed in that proof of distinctiveness requires more than proof of the existence of a relatively small number of people who associate a mark with the applicant.  In re Paint Products Co., 8 USPQ2d 1863, 1866 9TTAB 1988).  Thus, this evidence is not persuasive on the issue of how the average customer perceives the surname “BECKMAN” with the applicant.

 

Proof of Distinctiveness under Section 2(f)

If the applicant believes that the mark has acquired distinctiveness, that is, that it has become a distinctive indicator of source for the goods/services, the applicant may amend to seek registration under Trademark Act Section 2(f), 15 U.S.C. §1052(f).  This Office will decide each case on its own merits.  The examining attorney will consider the following principal factors in this decision: (1) how long the applicant has used the mark; (2) the type and amount of advertising of the mark; and (3) the applicant’s efforts to associate the mark with the goods/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.  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. 

 

Further action awaits response to the above.

 

 

/Mrs. W. K. H. Price, Esq./

Trademark Attorney

Law Office 111

(703) 308-9111,ext. 426

ecom111@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.