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. 

 

 

Serial Number  76/629092

 

The assigned examining attorney has reviewed the referenced application and determined the following:

 

SEARCH

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.

 

However, applicant must respond to the following refusals.

 

 

REFUSAL: NON-DISTINCTIVE  (for Classes 3 and 5)

Registration is refused because the proposed mark, which consists solely of a non-distinctive background design and/or non-distinctive configuration of the packaging for the goods, does not function as a source-identifier for the identified goods.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051, 1052, 1053 and 1127; See In re Benetton Group S. p. A., 48 USPQ2d 1214 (TTAB 1998); In re Anton/Bauer Inc., 7 USPQ2d 1380 (TTAB 1980); In re Wendy’s International, Inc., 227 USPQ 884 (TTAB 1985); Permatex Company, Inc. v. California Tube Products, Inc., 175 USPQ 764 (TTAB 1972); TMEP §§1202.11 and 1301.02(a); In re Mogen David Wine Corp., 372 F.2d 539, 152 USPQ 593 (C.C.P.A. 1967); In re McIlhenny Co., 278 F.2d 953, 126 USPQ 138 (C.C.P.A. 1960); TMEP §1202.02(b)(ii).

 

Here, the proposed mark consists of a geometric shaped grid, which is non-distinctive because it merely features an overall polygon shape with grids, i.e., a non-distinctive geometric shape.  In fact, applicant has admitted that the proposed mark is merely a label that is “affixed to the back of a transparent bottle so that it can be seen through the front of the bottle and forms a background for the front labeling” [emphasis added].  See application. 

 

With respect to the registrability of non-distinctive background designs, “[i]t is settled that common basic shapes such as circles, ovals, triangles, diamonds, stars and other geometric designs, when used as vehicles for the display of word or letter marks, are not regarded as indicia of origin for the goods to which they are applied in the absence of a showing of secondary meaning in the design alone.”  Permatex Company, Inc. v. California Tube Products, Inc., 175 USPQ 764, 766 (TTAB 1972).

 

In the present case, applicant’s mark is intended to form a “background for the front labeling” to create a “wallpaper” effect, and would be perceived as merely ornamental and not source-identifying for the identified goods.

 

For matter that does not inherently function as a mark because of its nature (e.g., nondistinctive product container shapes, overall color of a product, mere ornamentation), evidence of five years’ use is not sufficient to show acquired distinctiveness.  In such a case, actual evidence that the matter is perceived as a mark for the relevant goods or services would be required to establish distinctiveness.  See generally In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985) (color pink as uniformly applied to applicant’s fibrous glass residential insulation); In re R.M. Smith, Inc., 734 F.2d 1482, 222 USPQ 1 (Fed. Cir. 1984) (configuration of pistol grip water nozzle for water nozzles); Edward Weck Inc. v. IM Inc., 17 USPQ2d 1142 (TTAB 1990) (color green for medical instruments); In re Cabot Corp., 15 USPQ2d 1224 (TTAB 1990) (configuration of a pillow-pack container for ear plugs and configuration of a pillow-pack container with trade dress [white circle surrounded by blue border] for ear plugs).

 

Applicant should note the following additional ground for refusal.

 

 

REFUSAL: MARK DOES NOT FUNCTION AS TRADEMARK

IMPROPER SPECIMEN OF USE FOR GOODS

The examining attorney refuses registration because the proposed mark does not function as a trademark.  Trademark Act Sections 1, 2, 3 and 45, 15 U.S.C. §§1051, 1052, 1053 and 1127.  The proposed mark neither identifies and distinguishes the goods of the applicant from those of others nor indicates their source.  In Re Remington Products Inc., 3 USPQ2d 1714 (TTAB 1987).  TMEP §§ 1301.02 and 1301.02(d).  Please note that the proposed mark does not function as a trademark because the specimen submitted with the application is unacceptable as evidence of actual trademark use; therefore, the proposed mark cannot identify and distinguish the applicant's goods from those of others nor indicate their source. 

 

The specimen of record is merely the color version of applicant’s proposed mark.  However, this specimen is unacceptable as evidence of actual trademark use because it does not show use of the proposed mark in connection with goods, namely the mark does not appear on the actual goods.  Therefore, applicant must submit a specimen that shows how the applicant uses the mark in commerce with the identified goods. 

 

Examples of acceptable specimens are tags, labels, instruction manuals, containers or photographs that show the mark on the actual goods or packaging.  TMEP §904.04 et seq.

 

The applicant must verify, with an affidavit or a declaration under 37 C.F.R. §2.20, that the substitute specimen was in use in commerce at least as early as the filing date of the application.  37 C.F.R. §2.59(a); TMEP §904.09.

 

If an amendment of the dates-of-use clause is necessary in order to state the correct dates of first use, the applicant must verify the amendment with an affidavit or a declaration in accordance with 37 C.F.R. §2.20.  37 C.F.R. §2.71(c); TMEP §§903.05 and 1109.09(a).

 

Pending an adequate response to the above, the examining attorney refuses registration under Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051, 1052 and 1127, because the record does not show use of the proposed mark as a trademark.

 

NOTE:  The applicant may be able to overcome the specimen refusal by amending the application to assert a different basis for filing the application and submitting the requirements for the new basis.  TMEP §§806.03 et seq.  In this case, the applicant may wish to amend the application to assert an intent to use basis under Section 1(b) basis, and satisfying all the requirements for this new basis. 

 

Although the examining attorney has refused registration, the applicant may respond to the refusals to register by submitting evidence and arguments in support of registration.  If the applicant chooses to respond to the refusals to register, the applicant must also respond to the following.

 

 

DRAWING

1. Since applicant is seeking to register a configuration of their packaging or a specific design feature of the packaging, applicant should note the following additional requirements concerning the drawing for such cases.  The applicant must submit:
2. 1. A substitute drawing that presents a single three-dimensional view of the packaging showing in solid lines those features which applicant claims as its mark and the remainder of the drawing in broken or dotted lines.  In re Water Gremlin Co., 635 F.2d 841, 208 USPQ 89 (C.C.P.A. 1980); In re Famous Foods, Inc., 217 USPQ 177 (TTAB 1983); 37 C.F.R. §2.52(b)(2) and (b)(4); TMEP §§807.08 and 807.10; and
   2. a clear and concise description of the features claimed as the mark should also be included in such an application.  37 C.F.R. §2.37; TMEP §§807.08, 807.10 and 1202.02(d).  Applicant may include a description as follows, if accurate:

 

 

The mark consists of a [i.e., square grid pattern shaded in the color teal at the top and bottom and fading to the color white as applied to the label which is affixed to the back of a transparent bottle so that it can be seen through the front of the bottle and forms a background for the front labeling].  The dotted outline of the container is intended to show the position of the mark and is not a part of the mark. 

 

2. Applicant must submit a new drawing that shows the mark in color, The Office no longer accepts black and white drawings with a color claim/stippling.  37 C.F.R. §2.52(b)(1); TMEP §§807.07 et seq. 

 

3. The color claim and color description do not list all the colors appearing in the drawing of the mark.  Applicant must submit a complete color claim and color description of the mark that reference all the colors appearing in the drawing and a description of where the colors appear in the mark.  37 C.F.R. §2.52(b)(1); TMEP §807.07(a)(ii).  For example,

 

 

 

IDENTIFICATION & CLASSIFICATION OF GOODS

The following wording in the identification of goods is indefinite and needs clarification because it fails to identify the goods with sufficient particularity and/or identifies goods classified in other classes:

-         hand sanitizing and disinfecting preparation in Class 3; and

-         hand sanitizing preparations in Class 5.

 

 “Sanitizing” soaps and/or chemical preparations are generally classified in Class 5, whereas “disinfecting” soaps/preparations may be classified in Class 3 or 5.  Furthermore, applicant must specify the nature of the “preparations.”

 

For example, “disinfectant soaps” are in Class 3, whereas “disinfectants for sanitary purposes,” “disinfecting hand wash,” “anti-bacterial alcohol skin sanitizer gel,” “chemical preparations for sanitary purposes,” “sanitizing sterilizing preparations” and “sanitary wipes” are classified in Class 5.

 

Therefore, applicant may amend the wording as indicated above, as follows, if accurate: “citrus-scented and unscented hand disinfecting soaps with germicidal and anti-bacterial properties, and germicidal and anti-bacterial hand and lotion soap” in Class 3; and “citrus scented and unscented hand disinfectants for sanitary purposes with anti-microbial properties, and anti-microbial hand and lotion soap” are classified in Class 5.

 

However, please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Trademark Rule 2.71(a), 37 C.F.R. §2.71(a), restricts amendments to the identification of goods or services as follows, “The applicant may amend the application to clarify or limit, but not to broaden, the identification of goods and/or services.”  This rule applies to all applications.  Therefore, the applicant may not amend to include any goods or services that are not within the scope of goods or service set forth in the present identification.

 

 The Acceptable Identification of Goods and Services Manual sets out acceptable language for identifying goods and services of various types.  The listing is by no means exhaustive but is intended to serve as a guide to examining attorneys in acting on applications and to the public in preparing applications.  For assistance with identifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.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:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action has been issued via email, you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• 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 in your response.

 

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.