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  76/469828

 

The assigned examining attorney has reviewed the referenced application and determined the following.

 

SEARCH OF OFFICE RECORDS

 

The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d).  TMEP section 1105.01.

 

REGISTRATION

 

Ornamental – International Class 25

 

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.  The applicant’s specimens of record, namely, photographs of t-shirts, show the mark in large letters on the front of the shirt.  The examining attorney must conclude on 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.   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.

 

The 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.  For example, the applicant could submit hang tags used on the goods featuring the mark.  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 of the proposed mark must therefore be refused.  The applicant may, however, offer evidence in support of registration.

 

INFORMALITIES

 

If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informalities:

 

Identification and Classification of Goods

 

The applicant has classified “t-shirts and sweat shirts” incorrectly.  The applicant must amend the application to classify the goods in International Class 25.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b).

 

The wording "containing the mark" in the identification of goods is unacceptable because it does not identify goods.  The applicant should delete this wording.  TMEP §1402.

 

The wording "series of books" in the identification of goods is unacceptable as indefinite because the applicant did not specify the subject matter of the books.  The applicant may amend this wording to "series of books in the field of [applicant must specify the subject matter]," if accurate.  TMEP §1402.

 

Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any goods or services that are not within the scope of the goods and services recited in the present identification.

 

If the applicant prosecutes this application as a combined, or multiple‑class, application based on use in commerce under Trademark Act Section 1(a), 15 U.S.C. §1051(a), the applicant must comply with each of the following:

 

(1)  The applicant must specifically identify the ^ in each class and list the ^ by international class with the classes listed in ascending numerical order.  TMEP §1403.01.

 

(2)  The applicant must submit a filing fee for each international class of goods/services not covered by the fee already paid.  37 C.F.R. §§2.6(a)(1) and 2.86(b); TMEP §§810.01 and 1403.01.  Effective January 1, 2003, the fee for filing a trademark application is $335 for each class.  This applies to classes added to pending applications as well as to new applications filed on or after that date.  

 

(3)  The applicant must submit: 

 

(a) dates of first use and first use in commerce and one specimen for each class that includes goods or services based on use in commerce under Trademark Act Section 1(a).  The dates of use must be at least as early as the filing date of this application, 37 C.F.R. §§2.34(a)(1) and 2.86(a), and the specimen(s) must have been in use in commerce at least as early as the filing date of the application, and/or

 

(b) a statement of a bona fide intention to use the mark in commerce on or in connection with all the goods or services specified in each class that includes goods or services based on a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), where such statement was not included for the goods or services in the original application.

 

(4)  The applicant must submit an affidavit or a declaration under 37 C.F.R. §2.20 signed by the applicant to verify (3) above.  37 C.F.R. §§2.59(a) and 2.71(c).

 

Applicant’s Response

 

No set form is required for response to this Office action.  The applicant must respond to each point raised.  Additional information is available on-line at the Patent and Trademark Office site on the global computer network.  The site is located at WWW.USPTO.GOV.

 

/wgb/

William Breckenfeld

Trademark Attorney

Law Office 113

703-308-9113 x158 Phone

703-746-8113 Fax

ecom113@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.