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  76/496039

 

This letter responds to the applicant’s communication filed on 1/2/04.

 

The dates of use reference to the basis for application has been accepted.

 

The examining attorney has reviewed the substitute specimen and determined as follows.

 

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 examining attorney must consider the size, location and dominance of the proposed mark, as applied to the goods, to determine whether ornamental matter serves a trademark function.  In re Dimitri’s Inc., 9 USPQ2d 1666, 1667 (TTAB 1988); In re Astro-Gods Inc., 223 USPQ 621, 623 (TTAB 1984).  The proposed mark, emblazoned across the front of the T-shirt,  may be likely to be perceived merely as a decorative or ornamental feature of the goods.

 

The applicant may attempt to overcome the stated refusal in several ways. 

 

(1)       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).

 

      (2) 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).

 

 

     (3) The applicant may submit a substitute specimen that shows proper non-ornamenta                                                        trademark use, along with a statement supporting use of the specimen.  The statement supporting use of the substitute specimen must read as follows: 

 

The substitute specimen was in use in commerce at least as early as the filing date of the application.

 

             The applicant must sign this statement either in affidavit form or with a declaration under

            37 C.F.R. §2.20; TMEP §904.09. 

 

(4) 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.

 

           Although Supplemental Register registration does not afford all the benefits of registration

           on the Principal Register, it does provide the following advantages:

 

• The registrant may use the registration symbol ®;
• The registration is protected against registration of a confusingly similar mark under §2(d) of the Trademark Act, 15 U.S.C. §1052(d);
• The registrant may bring suit for infringement in federal court; and
• The registration may serve as the basis for a filing in a foreign country under the Paris Convention and other international agreements.

 

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 or using one of the ways mentioned above to overcome this refusal.

 

The following is a properly worded declaration under 37 C.F.R. §2.20.  At the end of the response, the applicant should insert the declaration signed by a person authorized to sign under 37 C.F.R. §2.33(a).

 

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 facts set forth in this application are true; 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)

 

 

 

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

                                                                                                                      

 

 

 

/Priscilla Milton/

Examining Attorney

Law Office 110

Priscilla.Milton@uspto.gov (for informal questions)

(703) 308-9110 Ext. 423

ecom110@uspt.gov (for formal responses only)

 

 

 

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.