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  76/566327

 

The assigned examining attorney has reviewed the referenced application and 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—Multiple Colors

 

The mark appears to consist solely of multiple colors as indicated in the description of the mark.  Therefore, registration is refused because the proposed color mark, consisting of colors 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.

 

 

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 colors GRAY AND BLACK 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—Colors

 

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.

 

New Drawing Requirment

 

Applicant must depict the mark on the drawing using broken or dotted lines to show the mark’s position on the goods or container.  37 C.F.R. §2.52(b)(4); TMEP §807.10.  The Office no longer accepts black and white drawings with color lining and/or a color claim.  37 C.F.R. §2.52(b)(1).  Therefore, the applicant must delete the color lining from the drawing of the mark.  However, in this instance, the applicant may continue to show the color black in solid black color in the drawing of the mark.

 

The requirements for a special-form drawing are as follows:

 

·        The drawing may appear in black and white or in color.

 

·        Drawings must be typed or made with a pen or by a process that will provide high definition when copied.  A photolithographic, printer’s proof copy, or other high quality reproduction of the mark may be used.  All lines must be clean, sharp and solid, and must not be fine or crowded.

 

·        The image must be no larger than 3.15 inches (8 cm) high by 3.15 inches (8cm) wide.

 

·        If reduction of the mark to the required size renders any details illegible, then applicant may insert a statement in the application to describe the mark and these details.

 

37 C.F.R. §§2.52(b); See TMEP §§807.01(b) and 807.07(a).

 

If submitted on paper, the Office prefers that the drawing be depicted on a separate sheet of non-shiny, white paper that is 8 to 8.5 inches wide and 11 to 11.69 inches long (20.3 to 21.6 cm. wide and 27.9 to 29.7 cm. long).  One of the shorter sides of the sheet should be regarded as its top edge. In addition, the drawing should include the caption “DRAWING PAGE” at the top of the drawing beginning one-inch (2.5 cm) from the top edge.  37 C.F.R. §2.54.

 

The Office strictly enforces these drawing requirements.

 

Description of the Mark Requirement

 

NOTE:  The Trademark Rules pertaining to drawings were amended on November 2, 2003.  For applications filed after November 2, 2003, applicants must follow the new special form drawing rules.  Exam Guide 01-03, section I.B. 

 

The applicant must submit a color claim and color description.  37 C.F.R. §2.52(b)(1).  Also, the applicant must indicate that the dotted or broken outline is merely to show the location of the mark on the goods and is not part of the mark as shown.  37 C.F.R. §2.52(a)(2)(iii); TMEP §§807.10 and 807.12.  The Office no longer accepts black and white drawings with color lining and/or a color claim.  37 C.F.R. §2.52(b)(1).  Therefore, the applicant must delete the lining statement from the description of the mark.

 

Applicant must submit the following: 

 

            The color gray and black are claimed as a distinctive feature of the mark.

 

The color gray is applied to the motor housing and rear handle; and the color black is applied to the hand grip, cap, magazine and nozzle. The dotted outline of the goods is intended to show the position of the mark and is not part of the mark as shown.

 

Common color names should be used to describe the colors in the mark, e.g., red, yellow, blue.  Exam Guide 01-03, section I.B.1.

 

 

NOTICE:  TRADEMARK OPERATION RELOCATING OCTOBER AND NOVEMBER  2004

 

The Trademark Operation is relocating to Alexandria, Virginia, in October and November 2004.  Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:

 

Commissioner for Trademarks

P.O. Box 1451

Alexandria, VA  22313-1451

 

Applicants, registration owners, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at www.uspto.gov.

 

 

 

/William T. Verhosek/

Examining Attorney

Law Office 114

703-308-9114

(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.