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  76/493137

 

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

 

FAILURE TO FUNCTION AS A TRADEMARK

 

The examining attorney refuses registration because the proposed mark does not function as a trademark.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051, 1052 and 1127.  The proposed mark neither identifies and distinguishes the goods of the applicant from those of others nor indicates their source.  In Re Remington Products Inc., 3 USPQ2d 1714 (TTAB 1987).  TMEP §§1202 et seq.

 

The applicant’s mark consists of the configuration of a three-dimensional miniature beverage container having an overall height of approximately 2.5 inches; a flat found base with a diameter of approximately 2.0 inches; a stem of approximately 1.0 inch; and a conical vessel with a height of 1.625 inch; a top rim diameter of approximately 2.75 inches; and a volume/capacity of approximately 2.0 fluid ounces and used by applying it to beverage containers for vodka tastings. 

The configuration applied for would not be perceived as a trademark because it is merely a commonly available vessel for serving the goods at tastings.  This particular size and shape drinking vessel is provided by multiple parties in addition to the applicant.  See attached Internet evidence.  Since this specific type of glass is readily available from multiple third parties, the configuration fails to project a single source.  The mark neither identifies and distinguishes the goods of the applicant from those of others nor indicates the source of the vodka.

 

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 issues.

 

SPECIMEN OF USE

 

The specimen does not show use of the mark on or in connection with the goods identified in the application.  The applicant’s goods are “alcoholic beverages, namely, vodka and flavored vodka.”  The applicant must submit a specimen showing use of the mark for the goods specified.  37 C.F.R. §2.56; TMEP §904. 

 

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); TMEP §904.09.  The following is a properly worded declaration under 37 C.F.R. Section 2.20 provided for the applicant’s convenience:

 

DECLARATION

 

The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. 1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that the substitute specimens submitted herewith were in use at least as early as the filing date of the application, and that all statements made of his/her own knowledge are true and all statements made on information and belief are believed to be true.

                                                                        _____________________________

                                                                        (Signature)

                        _____________________________

                                                                        (Print or Type Name and Position)

                                                                        _____________________________

                                                                        (Date)

 

DRAWING IS UNACCEPTABLE

 

The drawing is not acceptable because it contains extraneous lining that is not part of the mark and is instead presumably used to show light or depth.  The applicant must delete all extraneous lines from the drawing. 

 

The applicant must submit a new drawing showing the mark clearly and conforming to 37 C.F.R. Section 2.52. TMEP section 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).

 

NO SIMILAR MARKS FOUND

 

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.

 

NOTE REGARDING STATUS OF APPLICATION

 

Current status and status date information is available on-line at http://tarr.gov.uspto.report/ or, via push button telephone, for all federal trademark registration and application records maintained in the automated Trademark Reporting and Monitoring (TRAM) system.  The information may be accessed by calling (703) 305-8747 from 6:30 a.m. until midnight, Eastern Time, Monday through Friday, and entering a seven-digit registration number or eight-digit application number, followed by the "#" symbol, after the welcoming message and tone. Callers may request information for up to five registration number or application number records per call.

 

PLEASE NOTE:  Because it delays processing, submission of duplicate papers is discouraged.  Unless specifically requested to do so by the Office, parties should not mail follow up copies of documents transmitted by fax or email.  306; Cf.  ITC Entertainment Group Ltd. V. Nintendo of America Inc. 45 USPQ2d 2021 (TTAB 1998).

 

The following authorities govern the processing of trademark applications:

§         The Trademark Act, 15 U.S.C. Section 1051 et seq.;

§         Trademark Rules of Practice, 37 C.F.R. Part 2;

§         Trademark Manual of Examining Procedure (TMEP).

To access these resources, please see http://www.gov.uspto.report/web/offices/tac/.

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

/Barbara Brown/

Trademark Attorney, LO 116

TEL (703) 306-7924

FAX (703) 746-8116

barbara.t.brown@uspto.gov (informal)

ecom116@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.

 

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.