UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/483303
APPLICANT: Brickyard Trademarks, Inc.
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CORRESPONDENT ADDRESS: RACHE L. ST. PETER ICE MILLER 1 AMERICAN SQ # 82001 INDIANAPOLIS IN 46282-0020
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom105@uspto.gov
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MARK: GASOLINE ALLEY
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CORRESPONDENT’S REFERENCE/DOCKET NO: T01389-US-01
CORRESPONDENT EMAIL ADDRESS:
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Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 76/483303
The assigned examining attorney has reviewed the referenced application and determined the following.
NO CONFLICTING MARKS:
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.
ORNAMENTAL REFUSAL:
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. §§1051, 1052 and 1127. 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 (C.C.P.A. 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 §§1202.03 et seq.
The specimen shows the proposed mark buried in a very large and very decorative design on the front of a t-shirt. The purchasing public would perceive the mark as merely decorative and not as a source indicator.
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 §1202.03(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 §1202.03(c).
RESPONSE:
Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
To respond to this Office action electronically, the applicant must:
o send the response to mailto:ecom105@uspto.gov. E-mail sent to any other address will NOT be processed, and may result in ABANDONMENT of the application;
o submit specimens and/or evidence as scanned images or digital photographs in .GIF or .JPG format only. NO OTHER FORMATS WILL BE PROCESSED (TMEP §304.01);
o respond within six-months from the Office action mailing date, or within the period stated in the Office action;
o respond in English; and
o sign the response electronically, e.g. /john smith/. See 37 CFR §1.4(d)(1)(iii); TMEP §§304.08 and 804.05.
If the applicant wishes to receive future office actions by e-mail, the applicant must state in the response that “The applicant authorizes the USPTO to communicate with the applicant electronically at the following e-mail address: ____________.” Note: only one e-mail address may be used for correspondence. TMEP §804.07.
The examining attorney will send correspondence only to the e-mail address listed in the application. A request to change an e-mail address may be submitted by signed e-mail to one of the above e-mail addresses.
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
/Marlene Bell/
Marlene Bell
Trademark Examiner
Law Office 105
(703) 308-9105 X 173
ecom105@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.