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  76/395492

 

This letter responds to the applicant’s communication filed on 3-4-04.

 

The applicant has (1) amended to seek registration under Section 2(f) and (2) amended the identification of goods.

 

Number (2) is acceptable.

 

All issues, refusals and requirements raised in the previous office action which are not dealt with here are CONTINUED.

 

CLAIM OF ACQUIRED DISTINCTIVENESS

 

The applicant has claimed use for sixteen years. 

 

The applicant’s mark is highly descriptive as applied to the goods/services.  Therefore, the applicant’s allegation of sixteen years’ use alone is insufficient evidence of distinctiveness.  The applicant may submit actual evidence to prove the distinctiveness of the mark in commerce.  The 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 et seq.  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.

 

The amount and character of evidence needed to establish acquired distinctiveness depends on the facts of each case and particularly on the nature of the mark sought to be registered.  See Roux Laboratories, Inc. v. Clairol Inc., 427 F.2d 823, 166 USPQ 34 (C.C.P.A. 1970); In re Hehr Mfg. Co., 279 F.2d 526, 126 USPQ 381 (C.C.P.A. 1960); In re Gammon Reel, Inc., 227 USPQ 729 (TTAB 1985).  More evidence is needed where a mark is so highly descriptive that purchasers seeing the matter in relation to the named goods and/or services would be less likely to believe that it indicates source in any one party.  See, e.g., In re Bongrain International Corp., 894 F.2d 1316, 13 USPQ2d 1727 (Fed. Cir. 1990); In re Seaman & Associates, Inc., 1 USPQ2d 1657 (TTAB 1986); In re Packaging Specialists, Inc., 221 USPQ 917 (TTAB 1984).  However, no amount of purported proof that a generic term has acquired secondary meaning can transform that term into a registrable trademark.  Such a designation cannot become a trademark under any circumstances.  See Miller Brewing Co. v. G. Heileman Brewing Co., 561 F.2d 75, 195 USPQ 281 (7^th Cir. 1977), cert. denied, 434 U.S. 1025, 196 USPQ 592 (1978).

 

All issues  and requirements raised in the previous office action which are not dealt with here are CONTINUED.

 

 

 

 

 

/Anne Madden/

Trademark Examining Attorney

Law Office 103

703-308-9103 ext 130

703-746-8103 fax

 

 

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.