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  76/629093

 

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

 

 

Search of the Office Records

 

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.

 

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).

 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).

Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

 

 If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informalities.

 

INFORMALITIES

 

Identification of Goods Unacceptable

 

The identification of goods is unacceptable because it 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:

Lavender-scented hand disinfecting soaps with germicidal and anti-bacterial properties; germicidal and anti-bacterial hand and lotion soap” in International Class 3;

Lavender-scented hand disinfectants for sanitary purposes with anti-microbial properties, and anti-microbial hand and lotion soap, in International Class 5.  TMEP §1402.01.

 

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.  Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.

 

ID Manual

 

To the extent the suggested identification of goods or services is incomplete or inaccurate, the applicant is advised that the Trademark Acceptable Identification of Goods and Services Manual is accessible via the USPTO homepage at the following address: http://tess2.gov.uspto.report/netahtml/tidm.html.

 

 

New Drawing Required

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  purple 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 described as being a part 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,  
4. 1. “The colors purple and white are claimed as features of the mark;” and
   2. “The colors purple and white appear in [specify where the colors appear in the mark].   Common color names should be used to describe the colors in the mark, e.g., red, yellow, blue.  TMEP §807.07(a)(ii).

 

 

Specimen Unacceptable for Goods

 

The specimen is unacceptable as evidence of actual trademark use because it is merely a color version of the applicant’s mark.  The applicant must submit a specimen showing the mark as used in commerce.  37 C.F.R. §2.56.  Examples of acceptable specimens are tags, labels, instruction manuals, containers or photographs that show the mark on the 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.  Jim Dandy Co. v. Siler City Mills, Inc., 209 USPQ 764 (TTAB 1981); 37 C.F.R. §2.59(a); TMEP §904.09.

 

The following is a sample declaration under 37 C.F.R. §2.20 with a supporting statement for a substitute specimen:

 

The undersigned being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements and the like may jeopardize the validity of the application or document or any registration resulting there from, declares that the substitute specimen was in use in commerce at least as early as the filing date of the application; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.

 

 

_____________________________

(Signature)

 

_____________________________

(Print or Type Name and Position)

 

_____________________________

(Date)

 

 

If the declaration is filed electronically through TEAS, then applicant should sign the declaration by entering a “symbol” that applicant has adopted as a signature (e.g., /john doe/, /drl/, and /544-4925/).  The Office will accept any combination of letters, numbers, spaces and/or punctuation marks as a valid signature if it is placed between two forward slash (“/”) symbols.  37 C.F.R. §§ 2.33(d) and 2.193(c)(1)(iii); TMEP §§304.08 and 804.05.

 

Substituting the Basis

 

If the applicant cannot comply with the requirement for a specimen for the Use basis asserted, the applicant may substitute a different basis for filing if the applicant can meet the requirements for the new basis.  See TMEP §§806.03 et seq.

 

In this case, the applicant may wish to amend the application to assert an Intent to use basis.

 

If the applicant amends to Intent to use basis the applicant must submit the following statement:

 

The applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application since the filing date of the application. 

 

Trademark Act Section 1(b), 15 U.S.C. §1051(b).  This statement must be verified with an affidavit or a declaration under 37 C.F.R. §2.20.  Trademark Act Section 1(b), 15 U.S.C. §1051(b); 37 C.F.R. §2.34(a)(2)(i); TMEP §§806.01(b) and 804.02.  The following declaration will satisfy this requirement.

 

Declaration

 

The undersigned being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements and the like may jeopardize the validity of the application or document or any registration resulting there from, declares the applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application since the filing date of the application; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.

 

_____________________________

(Signature)

 

_____________________________

(Print or Type Name and Position)

 

_____________________________

(Date)

 

 

Conditional Refusal

 

Pending an adequate response to the above, registration is refused because the specimen of record does not show use of the proposed mark as a trademark.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051, 1052 and 1127; TMEP §§904.11 and 1202 et seq.

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

/Kathryn E. Coward/

Trademark Examining Attorney

United States Patent and Trademark Office

Law Office 115

(571) 272-9468

 

 

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.