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  76/476885

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

I.        SEARCH                       

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. §1052(d).  TMEP §704.02.

However, the applicant must address the following to enable further prosecution of the file.

II.       THE MARK IS A CONFIGURATION

The examining attorney refuses registration on the Principal Register because the proposed mark is a configuration of the goods and services which is not inherently distinctive.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. Sections 1051, 1052 and 1127.  The United States Supreme Court has held that a configuration of a product can never be inherently distinctive, and is registrable on the Principal Register only with a showing of acquired distinctiveness.  Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 54 USPQ2d 1065 (2000).  See also Textron, Inc. v. U.S. International Trade Commission, 753 F.2d 1019, 224 USPQ 625 (Fed. Cir. 1985); In re Craigmyle, 224 USPQ 791 (TTAB 1984); TMEP section 1202.03(b). 

Therefore, in the event of any further prosecution of the application, the applicant must present evidence that the proposed mark has acquired distinctiveness, that is, that it has acquired distinctiveness as a source indicator for the identified goods and services.  This evidence must relate to the promotion and recognition of the specific configuration embodied in the proposed mark and not to the goods and services in general.

The evidence may consist of examples of advertising or promotional material featuring the proposed mark, dollar figures related to the advertising and promotion of the proposed mark, statements of dealer and consumer recognition of the proposed mark and any other evidence that would show that the proposed mark has acquired distinctiveness as a source indicator for the identified goods and services. 

The applicant may also wish to consider amendment to the Supplemental Register in view of this refusal.

III.     FUNCTIONALITY - INTENT TO USE ADVISORY

In view of the nature of the proposed mark, the applicant is advised that, upon the examining attorney's consideration of an amendment to allege use or statement of use, registration may be refused under Trademark Act Section 2(e)(5), 15 U.S.C. Section 1052(e)(5), on the ground that the proposed mark is functional.  That is, the proposed mark may consist of a design feature of the identified goods and services that serves a utilitarian purpose.  In re Bose Corp., 772 F.2d 866, 227 USPQ 1 (Fed. Cir. 1985); In re R.M. Smith, Inc., 734 F.2d 1482, 222 USPQ 1 (Fed. Cir. 1984); In re Babies Beat, Inc., 13 USPQ2d 1729 (TTAB 1990); In re Vico Products Mfg. Co., 229 USPQ 364 (TTAB 1985), recon. denied, 229 USPQ 716 (TTAB 1986); TMEP section 1202.03 et seq.

IV.       INFORMALITIES

A) The disclaimer entered by the applicant is unacceptable in form.  The applicant must disclaim the descriptive wording “GLACIER WATER” apart from the mark as shown. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a).  The wording is merely descriptive because it describes a feature of the relevant goods and services.  (See enclosed Nexis evidence).  A properly worded disclaimer should read as follows:

            No claim is made to the exclusive right to use “GLACIER WATER” apart from the mark as shown.

Trademark Act Section 6(a), 15 U.S.C. §1056(a), permit the Office to require a disclaimer of an unregistrable component of a mark.  Trademark Act Section 2(e), 15 U.S.C. §1052(e), bars the registration of a mark which is merely descriptive or deceptively misdescriptive, or primarily geographically descriptive of the goods and services.  Therefore, the examining attorney may require the disclaimer of a portion of a mark which, when used in connection with the goods and services, is merely descriptive or deceptively misdescriptive, or primarily geographically descriptive.  If an applicant does not comply with a disclaimer requirement, the examining attorney may refuse registration of the entire mark.  TMEP §1213.01(b).

B) The applicant has classified the vending services incorrectly in Class 42.  The applicant must amend the application to classify the services in International Class 35.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b).

C) The recitation of services is unacceptable as indefinite.  The applicant may adopt the following recitation, if accurate:  “Vending machine services, namely, providing improved drinking water”.  TMEP §1402.11.  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 services that are not within the scope of the services recited in the present identification.

D) The drawing is unacceptable because it contains gray.  The drawing is also not acceptable because it will not reproduce satisfactorily.  The applicant must submit a new drawing showing the mark clearly and conforming to 37 C.F.R. §2.52.  TMEP §807.07(a).  The requirements for a special‑form drawing are as follows:

(1)   The drawing must appear in black and white; no color is permitted.

 

      (2)  Every line and letter must be black and clear.

 

      (3)  The use of gray to indicate shading is unacceptable.

 

      (4)  The lining must not be too fine or too close together.

 

 (5)  The preferred size of the area in which the mark is displayed is 2½ inches (6.1           cm.) high and 2½ inches (6.1 cm.) wide.  It should not be larger than 4 inches (10.3 cm.) high or 4 inches (10.3 cm.) wide.

 

(6)  If the reduction of the mark to the required size renders any details illegible, the applicant may insert a statement in the application to describe the mark and these details.

37 C.F.R. §2.52; TMEP §§807.01(b) and 807.07(a).  The Office will enforce these drawing requirements strictly. 

The Office prefers that the drawing be depicted on a separate sheet of smooth, nonshiny, white paper 8 to 8½ inches (20.3 to 21.6 cm.) wide and 11 inches (27.9 cm.) long, and that the sheet contain a heading listing, on separate lines, the applicant’s complete name; the applicant’s address; the goods or services recited in the application; and, if the application is filed under Section 1(a) of the Act, the dates of first use of the mark and of first use of the mark in commerce; or, if the application is filed under Section 44(d), the priority filing date of the foreign application.  37 C.F.R. §2.52(b); TMEP §§807.01(a), 807.01(b), 807.01(c) and 807.07(a).

 

 

Carolyn Pendleton Cataldo

Trademark Attorney

                                                                     Law Office 103

                                                                     Phone: (703) 308-9103 (ext. 222)

                                                                     Fax:  (703) 746-8103

                                                                     Email: carolyn.pendleton@uspto.gov

FEE INCREASE

 

Effective January 1, 2003, the fee for filing an application for trademark registration will be increased to $335.00 per International Class.  The USPTO will not accord a filing date to applications that are filed on or after that date that are not accompanied by a minimum of $335.00. 

 

Additionally, the fee for amending an existing application to add an additional class or classes of goods/services will be $335.00 per class.                            

 

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.

mAIL-IT REQUESTED: JUNE 18, 2003                            10083K

         CLIENT: CP

       LIBRARY: NEWS

          FILE: ALLNWS

 YOUR SEARCH REQUEST AT THE TIME THIS MAIL-IT WAS REQUESTED:

 NOCAPS("GLACIER WATER")

 NUMBER OF STORIES FOUND WITH YOUR REQUEST THROUGH:

      LEVEL   1...     547

 

LEVEL    1 PRINTED

 

THE SELECTED  STORY NUMBERS:

1,8,13,15-16,19-20

 

DISPLAY FORMAT: 30 VAR KWIC

 

 

 

 

 

 

 

 

  

 

          

 

 

Copyright 2003 Seattle Post-Intelligencer  

THE SEATTLE POST-INTELLIGENCER

 

June 12, 2003, Thursday  FINAL

 

SECTION: NEWS,

 

 Pg. A1 

 

LENGTH: 1289 words 

 

HEADLINE: SWIMMING THE COLUMBIA - ALL OF IT - TO ADVOCATE FOR ITS HEALTH

HIS GOAL IS A POLLUTION-FREE RIVER 

 

BYLINE: KRISTIN DIZON P-I reporter 

 

DATELINE: THE DALLES, Ore. 

 

BODY:

 

   ... you'd have to be crazy to swim in." 

 

   This is the most challenging stretch for Swain besides the northern bend near the river's start, where it travels 100 miles north in British Columbia. There, he was hit by logs and branches in icy-cold glacier water amidst powerful swells. 

 

   Tuesday, he swam 15 miles in just over 6,300 strokes. Most days he swims six hours, but his progress varies from five to 15 river miles, depending on the conditions. Sometimes he's greeted with cheers and ...

Copyright 2003 Rockford Register Star (Rockford, IL)

 

All Rights Reserved  

Rockford Register Star (Rockford, IL)

 

April 14, 2003 Monday

 

SECTION: LOCAL STATE; Pg. 1B 

 

LENGTH: 426 words 

 

HEADLINE: Get to Know Me 

 

BYLINE: Sarah Ketcher, Staff 

 

BODY:

 

   ... English homework, doing the cat litter and folding clothes. 

 

   * Something you've always wanted to do: Bungee-jump off a really high bridge. The closest I ever got was jumping off a 70-foot bridge into a moving river full of glacier water from the mountains in Washington. Tons of fun! 

 

   * Favorite sayings: "That's completely ridiculous!" or "Hey booboo!" 

 

   * If you had a chance to apologize to anyone, who would it be? My parents, for all the screw-ups I've had in the past and for all of the times they've ...

Copyright 2003 CanWest Interactive, a division of

 

CanWest Global Communications Corp.

 

All Rights Reserved  

The Star Phoenix (Saskatoon)

 

March 4, 2003 Tuesday Final Edition

 

SECTION: Business; Pg. C4 

 

LENGTH: 485 words 

 

HEADLINE: Bottled water labels hard to swallow: poll 

 

BYLINE: Jack Aubry 

 

DATELINE: OTTAWA 

 

BODY:

 

   ... a year ago, polled 1,106 Internet users across the country, balanced by age, gender and region. It carries a margin of error of three per cent, 19 times in 20. 

 

   The most popular definition for "glacier water" was "water that has been obtained from ice taken from the glacier and melted at the bottling plant," with 53 per cent selecting it. 

Copyright 2003 The News Journal (Wilmington, DE)

 

All Rights Reserved  

The News Journal (Wilmington, DE)

 

March 2, 2003 Sunday

 

SECTION: 55 HOURS SUNDAY; Pg. 16G 

 

LENGTH: 100 words 

 

HEADLINE: GREETINGS FROM NEW ZEALAND 

 

BYLINE: Readers 

 

BODY: We drank crystal-cold glacier water and shuffled through ice-and-snow passageways. Making it even more interesting was wearing shorts and T-shirts. Being Down Under was a very uplifting experience." 

 

   Carla and George Krupanski, Newark 

 

   <a>Next time you're traveling, drop ...

Copyright 2003 The Times-Picayune Publishing Company  

Times-Picayune (New Orleans, LA)

 

February 16, 2003 Sunday

 

SECTION: TRAVEL; Pg. 2 

 

LENGTH: 838 words 

 

HEADLINE: GLOBETROTTING 

 

BODY:

 

   ... Passages to Freedom: the Underground Railroad in American History and Legend" and on the civil rights movement of the '60s. For a list of events, www.washington.org.

 

Paper Trails

 

Where will we find you next?

 

'Crystal clear sky, air as pure as glacier water, and eight inches of bone dry powder blanketing the slopes," writes Trey Freeman of Metairie. "This describes my trip to Park City over the Christmas holidays. I went snowboarding and was lucky enough to see a moose early one morning ...

Copyright 2003 Sun Media Corporation  

Edmonton Sun (Alberta, Canada)

 

January 4, 2003 Saturday,  Final Edition

 

SECTION: Out There;

 

 Pg. OT11;

 

 Outdoors 

 

LENGTH: 979 words 

 

HEADLINE: BROWNS ON THE BOW 

 

BYLINE: NEIL WAUGH, EDMONTON SUN 

 

BODY:

 

   ... bonus. But a burly brown trout - for which the upper Bow is rapidly becoming famous - would be cosmic. It was, after all, Jan. 1, and fly fishing is supposed to be many icy months away. 

 

   The river, which can be a brawling sluice of glacier water and snow melt in the summer, was flowing mellow and pure in its white winter cloak. I had rigged up a Prince Nymph under a yarn strike indicator with enough split shot pinched to the tippet to bounce the fly off the ...

Copyright 2003 BusinessWorld Publishing Corporation  

BusinessWorld

 

January 3, 2003, Friday

 

SECTION: Pg. 24 

 

LENGTH: 466 words 

 

HEADLINE: WEEKENDER: Marketing;

Bringing Alaskan water quality to RP 

 

BYLINE: Friena P. Guerrero 

 

BODY:

 

   ... amounts of oxygen trapped in the ice waiting to be released making Alaska Glacier pure water products naturally oxygenated, AGR said in a press release. 

 

   "People who live in regions whose land is irrigated by rich glacier water tend to live to ages of 120 and beyond," coauthors Dr. Ma Lan and Dr. Joel Wallach noted in their book Rare Earth Forbidden Cures. 

 

   "It's amazing to know that you are drinking water that has not been touched by human hands in ... 

 

   ... said. 

 

   AGR bottles its water at its source at the Chugach mountains in the Eklutna Lake at the terminus of the Eklutna Glacier, an eight mile long river of ice. 

 

   Because its immediate environment has been maintained and preserved with little intervention from machines or the like, glacier water still holds the beneficial elements of natural water. 

 

   "Ours is a structured water, it has the ions that the body needs," Mr. Serrano said. "Water without structure will kill a fish. It has the minerals and electrolytes that can cleanse and detoxify the body." 

 

   "Once people become more informed about differences in water, they will go to glacier water," he added. 

 

   AGR's products has also received recognition from various organizations not just for its water but also for its design. 

 

   In 1998, AGR Eklutna Glacier water was awarded "Best Tasting Water in America" by he United States Conference of ...