UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/492933
APPLICANT: William Grant & Sons, Inc.
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CORRESPONDENT ADDRESS: CAROL L. B. MATTHEWS HOLLAND & KNIGHT LLP 2099 PENNSYLVANIA AVENUE, N.W. SUITE 100 WASHINGTON, D.C. 20006-6801 |
RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom108@uspto.gov
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MARK:
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CORRESPONDENT’S REFERENCE/DOCKET NO: GRANT209
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 76/492933
The assigned examining attorney has reviewed the referenced application and determined the following.
The examining attorney refuses registration on the Principal Register under Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051, 1052 and 1127, because the proposed mark consists of a nondistinctive configuration of the packaging for the goods. As such, the proposed mark is not registrable on the Principal Register without proof of acquired distinctiveness. In re Mogen David Wine Corp., 372 F.2d 539, 152 USPQ 593 (C.C.P.A. 1967); In re McIlhenny Co., 278 F.2d 953, 126 USPQ 138 (C.C.P.A. 1960); TMEP §1202.02(b)(ii)
The test for determining inherent distinctiveness of product packaging trade dress was set forth in Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d 1342, 1344, 196 USPQ 289, 291 (C.C.P.A. 1977). The following “Seabrook” factors should be considered. Whether the proposed mark is:
(1) A “common” basic shape or design;
(2) Unique or unusual in the field in which it is used;
(3) A mere refinement of a commonly-adopted and well-known form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation for the goods;
(4) Capable of creating a commercial impression distinct from the accompanying words.
Note: This test is not applicable to product design trade dress.
The applicant seeks to register the configuration of a bottle for liqueur. A bottle shape is not unusual or unique in the liqueur field. The shape of the bottle that applicant is seeking to register is common. The bottle has a vertical shape with some swirling features cut into the neck and the base, the base has several glass levels and the bottle has a lip.
Although the examining attorney has refused registration on the Principal Register, the applicant may amend the application to seek registration on the Supplemental Register. Trademark Act Section 23, 15 U.S.C. §1091; 37 C.F.R. §§2.47 and 2.75(a); TMEP §§801.02(b), 815 and 816 et seq.
If the applicant wishes to register a configuration of the goods or their packaging or a specific design feature of the goods or packaging, the applicant should note the following additional requirements concerning the drawing. The drawing should present a single three‑dimensional view of the goods or packaging, showing those features that the applicant claims as its mark in solid lines and the remainder of the drawing in broken or dotted lines. In re Water Gremlin Co., 635 F.2d 841, 208 USPQ 89 (C.C.P.A. 1980); In re Famous Foods, Inc., 217 USPQ 177 (TTAB 1983); 37 C.F.R. §2.52(a)(2)(iii); TMEP §§807.10 and 807.12. A clear and concise description of the mark should also be included in such an application. TMEP §§807.12 and 1202.02(d).
The lining shown in the drawing appears to be a feature of the mark and not intended to indicate color. The applicant must insert a statement to that effect. 37 C.F.R. §2.37; TMEP §807.09(e).
Search Results
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.
/Angela Micheli/
Examining Attorney, Law Office 108
(703) 308-9108 ext. 253
(703) 746-8108 fax
angela.micheli@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.