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  76/538065

 

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

 

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.

 

Sections 1, 2 and 45 - Ornamentation Refusal

 

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. Sections 1051, 1052 and 1127.  The proposed mark consists of a single color for the identified goods and, as such, it embodies an ornamental feature of the goods.  See In re Owens‑Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985); Qualitex Co. v. Jacobson Products Co., 34 USPQ2d 1161 (1995); TMEP section 1202.04(e).

 

If the proposed mark identifies a color which is functional, it is not registrable on either the Principal or the Supplemental Register.  A color mark may be functional if it serves a purpose, such as yellow or orange for safety signs.  A color may also be functional if it is 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 normal manufacturing process.  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.  The applicant should note that in In re Howard S. Leight and Associates, Inc., 39 USPQ2d 1058 (TTAB 1996), the Board held that the color orange was a high visibility color and as such did not function as a trademark on safety earplugs See generally Henry, Right Hat, Wrong Peg:  In re Owens‑Corning Fiberglas Corporation  and the Demise of the Mere Color Rule, 76 Trademark Rep. 389 (1986).

 

Section 2(f) claim:

 

The applicant’s claim that the proposed mark has acquired distinctiveness under Section 2(f) because of the substantially exclusive and contiuous use since 1998 is insufficient to overcome this refusal. The burden of proof in such a color 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.  Applicant must provide actual evidence that the proposed mark has acquired distinctiveness for the identified goods.  See In re Star Pharmaceuticals, Inc., 225 USPT 212 (TTAB 1985).

 

This evidence may consist of the following:  (1) examples of advertising and promotional materials specifically promoting the identified color as a mark; (2) dollar figures for advertising devoted to promotion of the specified color as a mark; (3) dealer and consumer statements of recognition of the specified color as a mark; and (4) any other evidence that might establish recognition of the identified color as a mark for the goods.  TMEP §§1212 et seq.

 

Request for information

 

The applicant must provide the following information to permit the examining attorney to reach an informed judgement concerning the registrability of the proposed mark. 37 C.F.R. Section 2.61(b).

 

The applicant must indicate whether the identified color serves any purpose as used on the goods.  The applicant must indicate whether the identified color is 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. Section 2.61(b).

 

The applicant's response must also address the use of color in the relevant industry.  The applicant must advise the examining attorney of any other use of color by the applicant.  The applicant must also indicate whether competitors produce the 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.

 

Drawing and Description

 

The applicant’s description of the mark and the drawing submitted with the application are inconsistent. The drawing shows the bumper portion of the slide in solid lines. The solid lines indicate that the applicant is claiming the configuration of the the bumpers as a feature of the mark. The description of the mark, however, only claims the color BLUE as the mark. If the applicant is not claiming the configuration of the goods as a feature of the mark, a new drawing must be submitted showing the entire configuration in broken lines. The applicant is required to add the following statement to the description of the mark: “the matter shown in broken lines on the drawing serves to show positioning of the mark and no claim is made to it”. TMEP Section 807.10.

 

NOTE:  The Trademark Rules pertaining to drawings were amended on November 2, 2003.  For applications filed prior to November 2, 2003, applicants may follow either the new special form drawing rules or the special form drawing rules in force prior to their amendment on November 2, 2003.  Exam Guide 01-03, section I.B.6.

 

RULES AFTER NOVEMBER 2, 2003 – COLOR DRAWING PERMITTED

 

Applicant may submit (1) a new drawing that shows the mark in color, (2) a statement that “the color blue is claimed as a feature of the mark;” and (3) a description of where the color  appears in the mark, i.e., “the color blue appears on  the entire surface of the bumpers of the water slides”. 

 

In the present case, color is material to the commercial impression of the mark; its deletion would be considered a material alteration of the mark, and is therefore not permitted.  37 C.F.R. §2.72; TMEP §807.14(a).

 

Configuration of the goods claimed

 

If the applicant is claiming the configuration of the bumpers as part of its mark, the drawing is acceptable but the description of the mark must be amended. The following is an acceptable description if both the configuration and the color are claimed. “The mark consists of the configuration of the bumpers on water slides and the color blue as applied to the entire surface of the bumpers.”

 

 

 

/Teresa Rupp/

Trademark Senior Attorney

Law Office 106

Phone - (703) 308-9106 ext 138

Fax No. (703) 746-8106

 

 

 

 

 

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.