UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/593458
APPLICANT: Our Sunday Visitor, Inc.
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: LIFEFIRE
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS: |
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 76/593458
The assigned examining attorney has reviewed the referenced application and determined the following:
SEARCH
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.
However, applicant must respond to the following refusal.
Registration is refused on the Principal Register because the proposed mark, as used on the specimen of record, is a decorative or ornamental feature of the goods and would not be perceived as a mark by the purchasing public. Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051, 1052 and 1127; 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); TMEP §§1202.03 et seq.
The specimen consists of a color depiction (photograph?) of three envelopes with the proposed mark featured prominently in the front center of the envelopes. The proposed mark is ornamental as used on the specimen because the wording, LIFEFIRE, is featured very prominently in large font emblazoned across the center of the envelopes. Consumers would likely perceive the wording as ornamental or decorative, rather than as a source indicator for envelope goods.
As to the size of the proposed mark appearing on the specimens, the larger the display relative to the size of the goods, the more likely that consumers will not view the ornamental matter as a mark. See, e.g., In re Dimitri’s Inc., 9 USPQ2d 1666, 1667 (TTAB 1988) (SUMO merely ornamental in part because the wording “appears in large lettering across the top-center portion of the T-shirts and caps”); International Order of Job’s Daughters v. Lindberg and Co., 633 F.2d 912, 208 USPQ 718 (9th Cir. 1980), cert denied 452 U.S. 941 (1982) (prominent display on jewelry was evidence that the proposed mark was being used in a non-trademark fashion).
Although there is no prescribed method or place for affixation of a mark to goods, the location of a mark on the goods “is part of the environment in which the [mark] is perceived by the public and … may influence how [the mark] is perceived.” See, e.g., In re Paramount Pictures Corp., 213 USPQ 1111, 1115 (TTAB 1982); In re Tilcon Warren Inc., 221 USPQ 86, 88 (TTAB 1984). Thus, where consumers have been conditioned to recognize trademarks in a certain location, as on the back or corners in small font, ornamental matter placed in a different location is less likely to be perceived as an indication of source. See TMEP §1202.03(b)
Applicant may overcome the stated ornamental refusal by doing one of the following, as appropriate:
(1) submitting evidence that the proposed mark has acquired distinctiveness of the applicant’s goods in commerce under Trademark Act Section 2(f), 15 U.S.C. §1052(f). Evidence 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); or
(2) submitting evidence that the proposed mark is an indicator of secondary source or sponsorship for the identified goods. University Book Store v. University of Wisconsin Board of Regents, 33 USPQ2d 1385, 1405 (TTAB 1994); In re Olin Corp., 181 USPQ 182 (TTAB 1982). That is, applicant may submit evidence showing that the proposed mark would be recognized as a trademark or service mark through applicant’s use of the proposed mark with goods or services other than those identified here. In re Original Red Plate Co., 223 USPQ 836, 837 (TTAB 1984). Applicant must establish that, as a result of this use on other goods or services, the public would recognize applicant as the secondary source of, or sponsor for, the identified goods. See TMEP §1202.03(c); or
(3) submitting a substitute specimen that shows proper non-ornamental trademark use, along with a statement that <”the substitute specimen was in use in commerce at least as early as the application filing date”/”the substitute specimen was in use in commerce prior to the filing of the amendment to allege use”/”the substitute specimen was in use in commerce prior to the expiration of time allowed to applicant for filing a statement of use”>, verified with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20. 37 C.F.R. §<2.59(a)/2.59(b)(1)/2.59(b)(2)>; or
(4) amending 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.
The mark as depicted on the drawing does not agree with the mark as it appears on the specimen(s), and clarification is required. Specifically, the drawing displays the mark as LIFEFIRE (one word), and the specimen depicts the mark as LIFE FIRE (two words).
Applicant must either:
1) submit a new drawing of the mark that agrees with the mark as it appears on the specimen and that is not a material alteration of the original mark; 37 C.F.R. §2.72(a); TMEP §807.14(a);
2) submit a substitute specimen that shows use of the mark as it presently appears on the drawing and is accompanied by a statement that “the substitute was in use in commerce at least as early as the filing date of the application,” verified with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20; 37 C.F.R. §§2.59(a) and 2.72(a); TMEP §904.09; or
3) amend the application basis to intent-to-use under Section 1(b), and satisfy all the requirements for this new basis.
37 C.F.R. §2.51; TMEP §§807.14 and 807.14(a)(i).
Applicant must submit the following standard character claim: “The mark is presented in standard characters without claim to any particular font style, size, or color.” 37 C.F.R. §2.52(a).
Applicant must specify whether the wording “LIFEFIRE” has any significance in the trade or industry or as applied to the goods/services described in the application. 37 C.F.R. §2.61(b).
NOTICE: TRADEMARK OPERATION RELOCATION
The Trademark Operation has relocated to Alexandria, Virginia. 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, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at http://www.gov.uspto.report/teas/index.html.
If applicant has any questions or needs assistance in responding, applicant is encouraged to telephone or email the assigned examining attorney.
Kelly A Choe
/KAC/
Trademark Attorney
USPTO Law Office 113
Tel. 571. 272.9429
Response. www.gov.uspto.report/teas
How to respond to this Office Action:
You may respond formally using the Office's Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://eteas.gov.uspto.report/V2.0/oa242/WIZARD.htm and follow the instructions therein, but you must wait until at least 72 hours after receipt if the office action issued via e-mail). PLEASE NOTE: Responses to Office Actions on applications filed under the Madrid Protocol (Section 66(a)) CANNOT currently be filed via TEAS.
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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.