UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/488086
APPLICANT: Fenner U.S., Inc.
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CORRESPONDENT ADDRESS: MICHAEL A. DOCTROW, ESQUIRE MCNEES, WALLACE & NURICK P. O. BOX 1166 HARRISBURG, PA 17108-1166
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom114@uspto.gov
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MARK:
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CORRESPONDENT’S REFERENCE/DOCKET NO: 10933-0010
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 76/488086
The following authorities govern the processing of trademark and service mark applications: The Trademark Act, 15 U.S.C. Section 1051 et seq., the Trademark Rules of Practice, 37 C.F.R. Part 2, and the Trademark Manual of Examining Procedure (TMEP).
The assigned examining attorney has reviewed the referenced application and determined the following. 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—Multiple Colors
It appears that the applicant claims only the multiple colors of GOLD AND BLACK as its mark and not the configuration of the goods.
Therefore, the examining attorney refuses registration on the Principal Register because the proposed mark is merely an ornamental feature of the goods. Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051, 1052 and 1127. The proposed mark consists of multiple colors for the identified goods and, as such, it embodies an ornamental feature of the goods. See In re Owens‑Corning Fiberglas Corporation, 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985); TMEP §1202.05.
If the proposed mark identifies a color that is functional, it is not registrable on the Principal Register under §2(f), or the Supplemental Register. TMEP §1202.05(b). A color may be functional if it yields a utilitarian or functional advantage, for example, yellow or orange for safety signs. Brunswick Corp. v. British Seagull Ltd., 35 F.3d 1527, 32 USPQ2d 1120 (Fed. Cir. 1994), cert. denied, 514 U.S. 1050 (1995) (color black functional for outboard motors because it provides competitive advantages in terms of being compatible with a wide variety of boat colors and making the engines appear smaller); In re Ferris Corporation, 59 USPQ2d 1587 (TTAB 2000) (color pink used on surgical wound dressings is functional because the actual color of the goods closely resembles Caucasian human skin); In re Orange Communications, Inc., 41 USPQ2d 1036 (TTAB 1996) (colors yellow and orange held to be functional for public telephones and telephone booths, since they are more visible under all lighting conditions in the event of an emergency); In re Howard S. Leight & Associates Inc., 39 USPQ2d 1058 (TTAB 1996) (color coral held to be functional for earplugs, because it is more visible during safety checks). A color may also be functional if it is more economical to manufacture or use. For example, a color may be a natural by-product of the manufacturing process for the goods. In such a case, appropriation of the color by a single party would place others at a competitive disadvantage by requiring them to alter the manufacturing process.
However, if the proposed color mark is not functional in either sense, it may be registrable on either the Principal Register with a showing of acquired distinctiveness or on the Supplemental Register. Color marks are never inherently distinctive, and cannot be registered on the Principal Register without a showing of acquired distinctiveness under §2(f) of the Trademark Act, 15 U.S.C. §1052(f). Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 211-212, 54 USPQ2d 1065, 1068 (2000) (citing Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 162-163, 34 USPQ2d 1161, 1162-1163 (1995)); In re Thrifty, Inc., 274 F.3d 1349, 61 USPQ2d 1121, 1124 (Fed. Cir. 2001); TMEP §1202.05(a).
In this case, the proposed mark consists of the colors GOLD AND BLACK as applied to the goods. Potential purchasers do not initially view such use of colors as a trademark for the goods but as ornamentation. Therefore, the applicant must show recognition by the relevant purchasing public of the colors as a trademark.
Additional Information Requirement—Colors
The applicant must provide the following information to permit the examining attorney to reach an informed judgment concerning the registrability of the proposed mark. 37 C.F.R. § 2.61(b).
The applicant must indicate whether the identified colors serve any purpose as used on the goods. The applicant must indicate whether the identified colors are a natural by‑product of the manufacturing process for the goods.
The applicant must provide any available advertising, promotional or explanatory literature concerning the goods, particularly any material which relates specifically to the proposed mark. The applicant should also provide any other evidence the applicant considers relevant to the issues in this case. 37 C.F.R. § 2.61(b).
The applicant’s response must also address the use of such colors in the relevant industry. The applicant must advise the examining attorney of any other use of color by the applicant, such as if the applicant sells the same goods in other colors. The applicant must also indicate whether competitors produce the same or similar goods in the identified color and in colors other than the identified color. The applicant must provide color photographs and color advertisements showing competitive goods.
Acquired Distinctiveness - Trademark Act § 2(f)
If the applicant continues to prosecute this application, the applicant must also establish that the proposed mark has become distinctive of the goods, that is, that it has acquired distinctiveness as a source indicator. TMEP §1202.05(a). The burden of proof in such a case is substantial. See In re Owens‑Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985); Edward Weck Inc. v. IM Inc., 17 USPQ2d 1142 (TTAB 1990). The “five years’ use statement,” which is sufficient to establish distinctiveness in certain circumstances, is insufficient in this case. The applicant must provide actual evidence that the proposed mark has acquired distinctiveness.
This evidence may consist of examples of advertising and promotional materials specifically promoting the identified color as a mark, dollar figures for advertising devoted to promotion of the specified color as a mark, dealer and consumer statements of recognition of the specified color as a mark and any other evidence that might establish recognition of the identified color as a mark for the goods. TMEP §§1212 et seq.
The applicant may also wish to consider amendment to the Supplemental Register in view of this refusal.
Please note that an applicant may not base a claim of acquired distinctiveness under Section 2(f) on ownership of a registration on the Supplemental Register. In re Canron, Inc., 219 USPQ 820 (TTAB 1983); TMEP §1212.04(d).
If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informalities in order for the application to proceed. Please note, compliance with the below mentioned informalities is insufficient, in and of itself, to overcome the above mentioned deficiencies.
The drawing displays the mark as GOLD on the upper half portion and BLACK on the bottom half portion. However, this differs from the display of the mark on the specimen, where it appears as GOLD on the upper two-thirds portion to include the protruding edge and BLACK on the bottom third portion below the protruding edge. The applicant must either:
(1) submit a new drawing of the mark that agrees with the specimen; or
(2) submit a substitute specimen that shows use of the mark shown in the drawing.
37 C.F.R. §2.51; TMEP §§807.14 and 807.14(a)(i). The applicant may not amend the drawing if the amendment would materially alter the character of the mark. 37 C.F.R. §2.72(a); TMEP §807.14(a).
If a substitute specimen is submitted, the applicant must verify, with an affidavit or a declaration under 37 C.F.R. §2.20, that the substitute specimen was in use in commerce at least as early as the filing date of the application. 37 C.F.R. §§2.59(a) and 2.72(a); TMEP §904.09.
New Drawing—Broken Lines To Show Positioning of Mark on Goods
If the applicant submits a new drawing, the applicant must continue to show the drawing in broken or dotted lines to show the mark’s position on the goods. The applicant must show the mark itself with solid lines. 37 C.F.R. § 2.52(a)(2)(ii); TMEP § 807.10. In this case, the entirety of the goods should be represented in broken lines, while the color lining should be in gold and black shown in solid lines.
Fee increase effective January 1, 2003
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 for classes added on or after January 1, 2003.
/William T. Verhosek/
Examining Atty/LO 114
703-308-9114x142
(Fax) 703-746-8114
ecom114@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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.