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  76/488917

 

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

NO CONFLICTING MARKS NOTED

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.

 

PROPOSED  MARK IS ORNAMENTAL

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 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 specimens show the proposed mark affixed in a large design to the back of a t-shirt and on a surf board.  It is unlikely that a consumer would perceive the proposed mark as an indicator of source.  Accordingly, it can not be registered on the Principal Register.

 

OPTION

 

The applicant may attempt to overcome the stated refusal in three ways.  First, 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).

 

Second, 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 section 1202.04(c).

 

Third, the applicant may amend to the Supplemental Register.  Certain marks which are not eligible for registration on the Principal Register, but which are capable of distinguishing the applicant’s goods or services, may be registered on the Supplemental Register.   Marks registered on the Supplemental Register are excluded from receiving some of the advantages of marks registered on the Principal Register.  Section 26 of the Act, 15 U.S.C. Section 1904 lists the excluded sections.  Registration on the Supplemental Register does permit: (1) use of the federal registration symbol; (2) use of the trademark as a bar to registration of confusingly similar marks; (3) registration abroad based on U.S. rights; and (5) the registrant may bring a suit in federal court.

 

Provided an application meets the requirements noted in TMEP §1114.02, it may be amended by requesting that the words "Principal Register" be changed to "Supplemental Register," which in effect changes the application from one requesting registration on the Principal Register to one requesting registration on the Supplemental Register.

 

INFORMALITIES

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

 

STIPPLING STATEMENT WILL NOT BE PRINTED

The applicant has inserted a stippling statement.  The statement will not be printed because it is unnecessary.

 

IDENTIFICATION OF GOODS

The identification of goods is unacceptable as indefinite. 

 

The brackets in the identification surrounding the term “clothing” must be deleted.  Generally, parentheses and brackets should not be used in identifications of goods and services.  The Post Registration Section of the Office uses single brackets to indicate that goods/services have been deleted from a registration either by amendment of a registration under 15 U.S.C. §1057, filing of a partial affidavit of continued use under 15 U.S.C. §1058, or filing of a partial renewal application under 15 U.S.C. §1059.  The Post Registration Section also uses double parentheses to indicate that certain goods or services are not claimed in an affidavit of incontestability under 15 U.S.C. §1065.  See TMEP Chapter 1600 regarding affidavits of continued use or excusable nonuse under 15 U.S.C. §1058, renewal applications under 15 U.S.C. §1059, affidavits of incontestability under 15 U.S.C. §1065, and amendment of registrations under 15 U.S.C. §1057.  TMEP Section 1402.12

 

For aid in selecting acceptable identifications of goods and services and determining proper classification, the searchable Manual of Acceptable Identifications of Goods and Services is available on the Agency website at the following address: http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/. The applicant may adopt the following identification, if accurate: 

 

Shirts, polo shirts, T-shirts, tank tops, rash guards, blouses, sweat shirts, sweat suits, sweaters, jackets, dresses, pants, shorts, sweat pants, sweat shorts, skirts, shoes, sandals, socks, sweatsocks, underwear, undershirts, slips, bras, surf wear, swim wear, swim trunks, swimsuits, swim trunks, wet suits, board shorts, hats, visors, baseball hats, clothing, namely, belts, and clothing, namely, ties, in International Class 25; and/or

 

Skim boards, surfboards, body boards, surfboard leashes, surfboard fins, skim board carry bags, surfboard carry bags, standing wave flow boards, traction pads for surfboards and surfboard wax, in International Class 28.

 

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. Section 2.71(a); TMEP section 1402.06.  Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.

 

 

 

/Tanya Amos/

Trademark Examining Attorney

Law Office 113

(703) 308-9113 Ext. 135 Phone

(703) 746-6485 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 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.