Response to Office Action

The Examiner has initially refused registration because the mark appears to be functional for the identified goods. Applicant submits that the mark is not functional and that the Examiner has misread the application. The mark consists of the distinctive check marks around the edges of the configuration of the goods, which serve no utilitarian function but instead are an indicator of the source of the goods.

The Applicant respectfully submits that the features of the mark are not functional, and serve no purpose other than to indicate the source of the goods.

The Examiner has in addition initially refused the application because the mark is purported to be ornamental as used on the goods. Matter that serves primarily as a source indicator, either inherently or as a result of acquired distinctiveness, and that is only incidentally ornamental or decorative, can be registered as a trademark. See In re Soccer Sport Supply Co., Inc., 507 F.2d 1400, 184 USPQ 345 (C.C.P.A. 1975); In re Paramount Pictures Corp., 213 USPQ 1111 (TTAB 1982). Applicant submits that the mark, consisting of the distinctive check marks around the edges of the configuration of the goods, inherently serves primarily as an indicator of the source of applicant's goods, and can therefore be registered as a trademark.

In determining whether ornamental matter can be registered, the following factors are to be considered: (1) the commercial impression of the proposed mark; (2) the relevant practices of the trade; (3) secondary source, if applicable; and (4) evidence of distinctiveness. TMEP 1202.03.

With reference to the commercial impression of the proposed mark, the significance of the proposed mark is a factor when determining whether ornamental matter serves a trademark function. Common expressions and symbols are normally not perceived as marks . TMEP 1202.03(a). Here, the distinctive check marks which comprise the mark are not common symbols, and are therefore more likely than such common symbols to be perceived as an indicator of the source of the goods.

            Another factor to be considered when determining whether ornamental matter serves a trademark function is the size, location and dominance of the proposed mark. See In re Dimitri's Inc., 9 USPQ2d 1666,1667 (TTAB 1988); In re Astro-Gods Inc., 223 USPQ 621,623 (TTAB 1984). Here, the mark consists of a series of small and discrete checkmarks placed only around the edges of the configuration of a saw blade, without dominating the configuration, and as such is likely to create the commercial impression of a trademark.

With reference to the relevant practices of the trade, because the mark is applied to saw blades, Applicant submits that the mark is inherently distinctive as a consumer would not expect such goods to be decorated, except for the purpose of identification of source.

With reference to distinctiveness, the Board in In re Paramount Pictures Corp., supra, found that arbitrary designs have "obvious source-indicating characteristics, just as do arbitrary terms such as "KODAK", 'DREFT", etc., because they usually have no other perceived significance". Here, the check marks are arbitrary and serve as an indicator of the source of the goods. The Board further held in Paramount that "while not every sign used on a product….functions as an indication of the source of the product on which it is used-e.g. some are merely part of the aesthetic ornamentation-the broad and liberal interpretation of our law is that, where such a sign also serves a source indicating function, it should be regarded as acceptable subject matter for registration" In re Paramount Pictures Corp., supra. Here, the mark functions as an indicator of source, and is therefore not ornamental.

Given that the overall commercial impression of the design features is that of a source indicator, and given that the design features are inherently distinctive in view of the practices of the trade, Applicant respectfully submits that the mark serves to identify Applicant's goods and is not ornamental.

Applicant submits herewith a substitute drawing to more clearly show the features Applicant is claiming as the mark and to remove the lines as requested by the Examiner.

Applicant has amended the identification of goods, submitted a description of the features claimed as the mark, responded to the functionality and ornamentation refusals, and submitted a substitute drawing. Noting there are no further objections, applicant respectfully requests that the application be approved for publication.