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  76/374765

 

The assigned examining attorney has reviewed the statement of use filed on October 17, 2003 and has determined the following.

 

Registration Refused--Mark is Ornamental/New Specimen Requirement

The examining attorney refuses registration on the Principal Register because the proposed mark is ornamental as used on the goods.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. Sections 1051, 1052 and 1127.  It appears from the present record that the public would perceive the proposed mark merely as a decorative or ornamental feature of the goods and not as an indicator of the source of the goods.   The applicant’s specimens merely show ornamental use of the proposed mark because  is only being used by emblazoning it across the front of the goods.  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 (CCPA 1961); In re Villeroy & Boch S.A.R.L., 5 USPQ2d 1451 (TTAB 1987); In re Astro-Gods Inc., 223 USPQ 621 (TTAB 1984); In re Olin Corp., 181 USPQ 182 (TTAB 1973); TMEP section 1202.04 et seq.

 

If applicant is making use of the mark in a non-ornamental way, for example, on tags and packaging that would show use of the mark as an indicator of source rather than as simply decorative matter on the goods, then this refusal may be withdrawn.  If applicant has additional use of the mark which may be non-ornamental, then applicant should submit three (3) new specimens (such as tags or packaging) to show use of the mark in a non-ornamental manner. The applicant must verify, with an affidavit or a declaration under 37 C.F.R. Section 2.20, that the substitute specimens were in use in commerce at least as early as the filing date of the application.  37 C.F.R. Section 2.59(a); TMEP section 905.10.  A declaration form has been reproduced below for your convenience.

 

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 may jeopardize the validity of the application or any resulting registration, declares that the substitute specimens submitted herewith were in use at least as early as the filing date of the application, 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)

 

In the alternative, applicant may attempt to overcome the stated refusal in either of two ways.  The applicant may submit evidence that the proposed mark has become distinctive of the applicant's goods in commerce.  Evidence submitted to show that the mark has acquired distinctiveness as an indicator of the source of the applicant's goods 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 section 1202.04(d).

 

In the alternative, the applicant may attempt to overcome the refusal by showing that the proposed mark is an indicator of secondary source or sponsorship for the identified goods.  That is, the applicant may submit evidence showing that the proposed mark would be recognized as a trademark or service mark through the applicant's use of the proposed mark with goods or services other than those identified here.  The applicant must establish that, as a result of this use on other goods or services, the public would recognize the applicant as the secondary source or sponsor of the identified goods.  See TMEP section 1202.04(c).

 

Registration on the Supplemental Register

Rather than presenting new specimens and a declaration or other evidence, applicant may amend to seek registration on the Supplemental Register. Trademark Act Section 23, 15 U.S.C. Section 1091; 37 C.F.R. Sections 2.47 and 2.75(a); TMEP sections 202.02(b) and 1115.   All that is required is a statement in the response to this Office Action. Pursuant to 15 U.S.C. Sections 1091 through 1096, the Supplemental Register allows registration of marks which are capable of acting as a source identifier for certain goods but which do not meet the statutory requirements for registration on the Principal Register.  Certain protections and advantages which are afforded to marks on the Principal Register are not available to those on the Supplemental Register.  Those differences are noted in 15 U.S.C. Section 1094 and should be reviewed prior to any proposed amendment.  TMEP 202.02(b).  Registration on the Supplemental Register gives an important protection, that is, against the registration of confusingly similar marks for related goods.

 

 

 

 

 

/Ysa de Jesus/

Trademark Attorney

US Patent and Trademark Office

(t)703.308.9114 x-476

 

 

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.