Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

Serial Number  76/622355

 

This letter responds to the applicant’s communication filed on May 4, 2007.  The applicant (1) amended back to the Principal Register under section 2(f) and submitted a declaration thereto, (2) submitted an amended drawing and (3) amended the description of the mark.  Based on the amended drawing and description, the section 2(e)(5) refusal is hereby withdrawn.  TMEP §714.04. 

 

Upon further review, a new issue has arisen regarding the mark in drawing, description and the acquired distinctiveness claim thereto.  The examining attorney maintains and continues the non-distinctive configuration refusal, a new drawing and a new description.  The following is advised.

 

New Drawing Requirement

 

In the response of May 4, 2007, the applicant amended the mark to the circular collared band, only, and disclaimed all functional aspects of the mark.   Therefore, a new drawing is required showing the mark in solid lines and the rest in broken or dotted lines which applicant has done.  However, the new drawing must also show the mark claimed in color only.  The rest of the mark must appear in white to show a disclaimer of color to those portions not claimed in the mark. 

 

This is not a color mark.  The applicant has made it clear that the mark is a configuration, and hence, a configuration mark with color.  If applicant wishes to have a color mark, then applicant may proceed in another application.

 

The applicant must submit a drawing of the mark showing the mark’s position on the goods and only that portion in color.  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; TMEP §§807.07, 1202.05(d) and 1202.05(d)(i). 

 

The goods depicted on the drawing should appear in broken lines. The broken lines inform the viewer where and how color is used on the product or package, while at the same time making it clear that the shape of the product, or the shape of the package, is not claimed as part of the mark. 37 C.F.R. §2.52(b)(4); TMEP §807.08 and 1202.05(d)(i).  In the absence of a broken-line drawing, the Office will assume that the mark is a composite mark consisting of the product shape, or the packaging shape, in a particular color.

 

Please note that the Office no longer accepts black and white drawings with color lining.  37 C.F.R. §2.52(b)(1). 

 

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

 

·        The drawing must appear 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.

 

Color Claim and Color Description of the Mark Requirement

 

The applicant must submit (1) a color claim naming the color(s) that are a feature of the mark and location of the color on the mark; and (2) a separate statement describing where configuration. 37 C.F.R. §2.52(b)(1); TMEP §807.07(a).

 

The applicant must also include a written description of the mark, indicating that the matter shown by the dotted lines is not a part of the mark and that it serves only to show the position of the mark. 37 C.F.R. §2.52(b)(4); TMEP §807.08.

 

Applicant must submit the following: 

 

The color red is claimed as a feature of the mark.  The color red appears in the collar-band encircling the product next to the threaded portions.

 

The mark consists of the configuration of a collar-band encircling the product located in the middle top and next to the threaded portions.  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.

 

Section 1, 2 and 45 Refusal Continued—Nondistinctive Configuration of Goods

 

In the response of May 4, 2007, the applicant amended the mark to a configuration, namely collar-band encircling the product located in the middle top and next to the threaded portions.

 

Registration is once again refused because the proposed mark comprises a configuration of the goods that is not inherently distinctive and would not be perceived as a mark.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051, 1052 and 1127.  The United States Supreme Court has held that a configuration of a product can never be inherently distinctive, and is registrable on the Principal Register only with a showing of acquired distinctiveness.  Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 54 USPQ2d 1065 (2000).  See also Textron, Inc. v. U.S. International Trade Commission, 753 F.2d 1019, 224 USPQ 625 (Fed. Cir. 1985); In re Craigmyle, 224 USPQ 791 (TTAB 1984); TMEP §1202.02(b)(i).

 

In the same response, the applicant claims section 2(f) based on actual evidence and submits 2  declarations attesting to the distinctiveness of the product.  The declarations attest to the overall configuration, which in previous action letters have been found functional.  However, the crux of the issue now is the distinctiveness of the design claimed, namely the collar-band encircling the product located in the middle top and next to the threaded portions.  There is no other evidence to show the distinctivness of the claimed mark.

 

In response to this refusal, applicant may present evidence that the proposed mark has acquired distinctiveness by submitting examples of advertising and promotional materials that specifically promote the proposed mark as a trademark in the United States, dollar figures for advertising devoted to such promotion, dealer and consumer statements of recognition of the proposed mark as a trademark and any other evidence that establishes recognition of the matter as a mark for the goods.  The evidence must relate to the promotion and recognition of the specific configuration embodied in the proposed mark and not to the goods in general. Wal-Mart, 529 U.S. at 211, 54 USPQ2d at 1068; See TMEP §§1212.06 et seq. regarding evidence of acquired distinctiveness. 

 

To determine whether the proposed mark has acquired distinctiveness, the trademark examining attorney will consider the following factors: (1) how long applicant has used the mark in the United States; (2) the type and amount of advertising of the mark in the United States; and (3) applicant’s efforts in the United States to associate the mark with the goods or services identified in the application.  See Ralston Purina Co. v. Thomas J. Lipton, Inc., 341 F. Supp. 129, 173 USPQ 820 (S.D.N.Y. 1972); In re Packaging Specialists, Inc., 221 USPQ 917 (TTAB 1984); 37 C.F.R. §2.41; TMEP §§1212, 1212.01 and 1212.06 et seq. 

 

Applicant may not rely on use other than use in commerce that may be regulated by the United States Congress in establishing acquired distinctiveness.  Use solely in a foreign country is not evidence of acquired distinctiveness in the United States.  In re Rogers, 53 USPQ2d 1741 (TTAB 1999); TMEP §§1010 and 1212.08.

 

Amendment to Supplemental Register Suggested

The applied-for mark has been refused registration on the Principal Register.  However, applicant may respond to the refusal by submitting evidence and arguments in support of registration and/or by 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.  Please note that amending to the Supplemental Register does not preclude applicant from submitting evidence and arguments against the refusal(s). 

 

 

 

/William T. Verhosek/

USPTO

LO 114

571-272-9464

 

 

 

NOTICE OF NEW PROCEDURE FOR E-MAILED OFFICE ACTIONS:  In late spring 2007, for any applicant who authorizes e-mail communication with the USPTO, the USPTO will no longer directly e-mail the actual Office action to the applicant.  Instead, upon issuance of an Office action, the USPTO will e-mail the applicant a notice with a link/web address to access the Office action using Trademark Document Retrieval (TDR), which is located on the USPTO website at http://portal.gov.uspto.report/external/portal/tow.  The Office action will not be attached to the e-mail notice.  Upon receipt of the notice, the applicant can then view and print the actual Office action and any evidentiary attachments using the provided link/web address.  TDR is available 24 hours a day, seven days a week, including holidays and weekends.  This new process is intended to eliminate problems associated with e-mailed Office actions that contain numerous attachments.

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above, and include the serial number, law office number, and examining attorney’s name.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.