Offc Action Outgoing

This letter responds to the applicant’s communication filed on April 12, 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 Based on the amended drawing and description, the section 2(e)(5) refusal is hereby withdrawn.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 April 12, 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 goods 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 black and white if color is not claimed as a feature of the mark, or in color if color is claimed as a feature of the mark.

Drawings must be 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 (8 cm) 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); TMEP §§807.04 et seq.

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; TMEP §§807.06 et seq.

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 located in the middle between the threaded portion and bayonet connection.

The mark consists of the configuration of a collar-band encircling the product located in the middle between the threaded portion and bayonet connection. 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 April 12, 2007, the applicant amended the mark to a configuration, namely collar-band encircling the product located in the middle between 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 between 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

RESPOND TO THIS ACTION: If there are any questions about the Office action, please contact the assigned examining attorney. A response to this Office Action should be filed using the Office’s Response to Office action form available at http://www.gov.uspto.report/teas/eTEASpageD.htm. If notification of this Office action was received via e-mail, no response using this form may be filed for 72 hours after receipt of the notification. Do not attempt to respond by e-mail as the USPTO does not accept e-mailed responses.

If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response. Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.

STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov. When conducting an online status check, print and maintain a copy of the complete TARR screen. If the status of your application has not changed for more than six months, please contact the assigned examining attorney.