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  76/557226

 

The assigned trademark examining attorney has reviewed the referenced application filed on November 5, 2003, and has determined the following.

 

The Office records have been searched and no similar registered or pending mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.

 

Ornamental Refusal—Single Color

 

Registration is refused because the proposed color mark, consisting of color applied to the identified goods, is merely an ornamental or decorative feature of such goods and thus would not be perceived as a trademark.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051, 1052 and 1127; See Qualitex Co. v. Jacobson Products Co., 115 S.Ct. 1300, 34 USPQ2d 1161 (1995); In re Owens‑Corning Fiberglas Corporation, 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985); In re Deere & Co., 7 USPQ2d 1401 (TTAB 1988); TMEP §1202.05.

 

If the proposed mark identifies a color that is deemed functional for the identified goods, then it is not registrable on the Principal Register under §2(f), or the Supplemental Register.  TMEP §1202.05(b).  A color may be functional if it yields a utilitarian or functional advantage, for example, yellow or orange for safety signs.  Brunswick Corp. v. British Seagull Ltd., 35 F.3d 1527, 32 USPQ2d 1120 (Fed. Cir. 1994), cert. denied, 514 U.S. 1050 (1995) (color black functional for outboard motors because it provides competitive advantages in terms of being compatible with a wide variety of boat colors and making the engines appear smaller); In re Ferris Corporation, 59 USPQ2d 1587 (TTAB 2000) (color pink used on surgical wound dressings is functional because the actual color of the goods closely resembles Caucasian human skin); In re Orange Communications, Inc., 41 USPQ2d 1036 (TTAB 1996) (colors yellow and orange held to be functional for public telephones and telephone booths, since they are more visible under all lighting conditions in the event of an emergency); In re Howard S. Leight & Associates Inc., 39 USPQ2d 1058 (TTAB 1996) (color coral held to be functional for earplugs, because it is more visible during safety checks).  A color may also be considered functional if it is more economical to manufacture or use.  For example, a color may be 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 manufacturing process.

 

However, 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.  Color marks are not inherently distinctive, and cannot be registered on the Principal Register without a showing of acquired distinctiveness under §2(f) of the Trademark Act, 15 U.S.C. §1052(f).  Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 211-212, 54 USPQ2d 1065, 1068 (2000) (citing Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 162-163, 34 USPQ2d 1161, 1162-1163 (1995)); In re Thrifty, Inc., 274 F.3d 1349, 61 USPQ2d 1121, 1124 (Fed. Cir. 2001); TMEP §1202.05(a).

 

In this case, the proposed mark consists of the color purple as applied to the goods.  Potential purchasers do not initially view such use of color as a trademark for the goods but as ornamentation.  Therefore, the applicant must show recognition by the relevant purchasing public of the color as a trademark.

 

Additional Information Requirement—Color

 

Applicant must provide the following information and documentation to permit proper examination of the proposed color mark, 37 C.F.R. §2.61(b):

 

• an explanation as to whether the identified color(s) serves any purpose as used on the goods;

 

• an explanation as to whether the identified color(s) is a natural by‑product of the manufacturing process for the goods;

 

• any available advertising, promotional or explanatory literature concerning the goods, particularly any material that relates specifically to the proposed mark;

 

• an explanation as to the use of color in applicant’s industry;

 

• a statement clarifying any other use of color by applicant;

 

• an explanation as to whether competitors produce the goods in the identified color(s) and in colors other than the identified color(s); and

 

• color photographs and color advertisements showing competitive goods.

 

Applicant may also submit any other evidence relevant to the issues in this case.

 

Acquired Distinctiveness - Trademark Act § 2(f)

 

If applicant continues to prosecute this application, then applicant must also establish that the proposed color mark has become distinctive of the goods, that is, that it has acquired distinctiveness as a source indicator.  TMEP §1202.05(a).  The burden of proof in such a 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.

 

The applicant may also wish to consider amendment to the Supplemental Register in view of this refusal.

 

Informalities

 

If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informalities in order for the application to proceed.  Please note, compliance with the below mentioned informalities is insufficient, in and of itself, to overcome the above mentioned deficiencies.

 

Color Mark is Unacceptable for Multiple Dissimilar Goods

 

The drawing of the mark is not acceptable for applicant’s multiple, dissimilar goods identified in the application, namely “end plugs, pistons, shafts, servos, servo covers.”  The drawing of the mark must be a substantially exact representation of the mark as used or intended to be used on the goods. 37 C.F.R. §2.51.  A drawing consisting of a depiction of only one of the goods will be accepted if the goods, or the portions of the goods on which color appears, are similar in form and function so that a depiction of only one of the products is still a substantially exact representation of the mark as used on all of the products. For example, if the mark is the color purple used on refrigerators and freezers, a drawing of a freezer (in broken lines, with a description of the mark indicating the color purple is used on the mark) would be sufficient. Or, if the mark is the color pink used on the handles of rakes, shovels and hoes, a drawing of any of those items (in dotted lines with a description of the mark stating the handle is pink) would be sufficient. Or, if the mark consists of packaging for various food items that is always blue with a pink circle, a drawing of any one of the packages (in dotted lines with a description of the colors) would be sufficient.

 

In this case, the color mark is acceptable only for “transmission valves” and similar goods, “valve sleeves.”  The drawing of the mark would not be a substantially exact representation of the mark as used on the other goods, neither in form or function.  Therefore, the applicant must delete the goods mentioned above from the identification of goods.

 

If the mark is used on multiple goods that are dissimilar or unrelated, or if color is used in different ways on different goods, so that a depiction of one of the goods is not a substantially exact representation of the mark as used on all of the goods (for example, the color purple used on microscopes and vending machines), a separate application must be submitted for each item.

 

Definite Identification and Classification of Goods and Additional Information Requirement

 

Incorrect Classification Of Particular Items—Add Correct Class Or Delete Item

Applicant classified the goods “pistons” in International Class 12; however, the correct classification is International Class 07.  Applicant must either delete these goods or add International Class 07 to the application.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §1401.04(b).

 

Amendment of Identification

The wording “servos, servo covers” “land vehicle transmission kits sold as a unit” in the identification of goods needs clarification because it is indefinite.  Applicant must amend the identification of goods to specify the common commercial or generic name for the goods.  If there is no common commercial or generic name for the product, then applicant must describe the product and intended consumer as well as its main purpose and intended uses.  TMEP §1402.01.

 

The applicant may adopt the following identification and classification, if accurate:

 

Automatic transmission parts for land vehicles, namely pistons in International Class 07.

 

Automatic transmission parts for land vehicles, namely, valves, valve sleeves, end plugs,  shafts, servo motors, servo motor covers, and land vehicle transmission rebuild kits sold as a unit in International Class 12.

 

TMEP §1402.01.

 

Amendment of Classification

If applicant adopts the suggested amendment of the goods, then applicant must amend the classification to International Class 07 and 12.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401 et seq

 

Additional Information

Applicant must submit samples of advertisements or promotional materials and a photograph of all the identified goods because the nature of the goods on which applicant uses or intends to use its mark is not clear from the present record.  If such materials are not available, then applicant must submit samples of advertisements or promotional materials and a photograph of similar goods.  In addition, applicant must describe in some detail the nature, purpose and channels of trade of the goods listed in the application.  37 C.F.R. §2.61(b); TMEP §§814 and 1402.01(d).

 

Additions to Identification Not Permitted and Identification Manual

Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.

 

For assistance with identifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of  Goods and Services at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.

 

Combined Application Requirements

If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the requirements below for those goods and/or services based on actual use in commerce under Trademark Act Section 1(a):

 

(1)   Applicant must list the goods/services by international class with the classes listed in ascending numerical order. TMEP §1403.01.

 

(2)   Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid. 37 C.F.R. §2.86(a)(2); TMEP §§810.01 and 1403.01.

 

(3)   Applicant must submit:

 

(a)    dates of first use of the mark anywhere and dates of first use of the mark in commerce; the dates of use, both anywhere and in commerce, must be at least as early as the filing date of the application, 37 C.F.R. §§2.34(a)(l)(i), 2.34(a)(1 )(ii) and 2.86(a)(3);

 

(b)   one specimen showing use of the mark for each class of goods and/or services; the specimen(s) must have been in use in commerce at least as early as the filing date of the application; 37 C.F.R. §§2.34(a)(1)(iv) and 2.86(a)(3); and

 

(c)    both the dates of use and a statement that "the specimen was in use in commerce at least as early as the filing date of the application" must be verified in a notarized affidavit or a signed declaration under 37 C.F.R. §2.20; 37 C.F.R. §§2.59(a) and 2.71(c).

 

Description of the Mark Requirement

 

The applicant must submit a concise description of the mark clearly indicating that the mark consists of a single color and the manner in which the color is used in relation to the goods.  TMEP §807.09(b).  Also, the applicant must indicate that the dotted outline is merely to show the location of the mark on the goods.  37 C.F.R. §2.52(a)(2)(iii); TMEP §§807.10 and 807.12. 

 

The description may be in the following form:

 

The mark consists of the single color purple in gradations as applied to the entire surface of the goods.  The dotted outline of the goods is intended to show the position of the mark and is not a part of the mark. 

 

Claimed Prior Registrations Not Pertinent

 

Applicant’s claim of ownership of U.S. Registration Nos. 2401518, 2591758, 2606066 and 2731580, will not be printed on any registration which may issue from this application because the marks are different.  Only prior registrations for the same or similar marks are considered related registrations for purposes of an ownership claim.  37 C.F.R. §2.36; TMEP §812.  Therefore, these registrations will be removed from the records.

 

 

 

 

/William T. Verhosek/

Examining Atty/LO 114

703-308-9114x142

(Fax) 703-746-8114

 

 

 

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 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.