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  76/629953

 

The assigned examining attorney has reviewed the applicant’s response to the first Office Action and has determined the following.

 

Refusal Maintained – Non-distinctive Configuration of Packaging

 

The refusal to register because the proposed mark comprises a non-distinctive configuration of the packaging for the goods and would not be perceived as a mark is continued and maintained.  The applicant’s bottle is a common shape for liquor and spirit bottles currently in use in commerce.  The applicant’s bottle is known as a flask bottle, which features a round shape with a narrow neck.  The applicant is referred to the United States Bureau of Land Management’s historic glass bottle identification and information website at: http://www.blm.gov/historic_bottles/ for additional information.   As such, the proposed mark is not registrable on the Principal Register without proof of acquired distinctiveness.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051, 1052 and 1127; 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).  To overcome this refusal, the applicant must comply with the requirements regarding a new drawing below.

 

Insufficient Evidence of Acquired Distinctiveness Under Section 2(f)

 

It is well established that the burden of demonstrating acquired distinctiveness rests with applicant.  In re Loew’s Theatres, Inc., 769 F.2d 764, 769, 226 USPQ 865, 869 (Fed. Cir. 1985).  The kind and amount of evidence necessary to establish that a mark has acquired distinctiveness in relation to goods or services necessarily depends upon the nature of the mark and the circumstances surrounding the use of the mark in each case.  Roux Laboratories, Inc. v. Clairol Inc., 427 F.2d 823, 166 USPQ 34 (C.C.P.A. 1970); In re Hehr Mfg. Co., 279 F.2d 526, 126 USPQ 381 (C.C.P.A. 1960); In re Capital Formation Counselors, 219 USPQ 916 (TTAB 1983).

 

As with establishing acquired distinctiveness by either of the other methods discussed above, the question to be resolved is not whether the mark is capable of becoming distinctive (which is the statutory standard for registration on the Supplemental Register), but whether acquired distinctiveness of the mark in relation to the goods or services has in fact been established in the minds of the purchasing public.  In re Redken Laboratories, Inc., 170 USPQ 526 (TTAB 1971); In re Fleet-Wing Corp., 122 USPQ 335 (TTAB 1959).

 

In this instance, the applicant has failed to meet its burden.  First, the applicant has claimed “long and widespread use of the color configuration trademark.”  However, the applicant claims a date of use of the mark anywhere and in commerce of May 1, 2004; about two years from the mailing date of this Office Action.  Two years use is a very short period of time and is not sufficient to establish that a mark has acquired distinctiveness in relation to goods.  This two years use is less than half of the statutory suggestion of five years of use as proof of distinctiveness.  Long use of the mark is one relevant factor to consider in determining whether a mark has acquired distinctiveness. See In re Uncle Sam Chemical Co., Inc., 229 USPQ 233 (TTAB 1986) (§2(f) claim of acquired distinctiveness of SPRAYZON for "cleaning preparations and degreasers for industrial and institutional use" found persuasive where applicant had submitted declaration of its president supporting sales figures and attesting to over eighteen years of substantially exclusive and continuous use); In re Packaging Specialists, Inc., 221 USPQ 917, 920 (TTAB 1984) (evidence submitted by applicant held insufficient to establish acquired distinctiveness of PACKAGING SPECIALISTS, INC., for contract packaging services, notwithstanding, inter alia , continuous and substantially exclusive use for sixteen years, deemed “a substantial period but not necessarily conclusive or persuasive”).

 

Second, the applicant claimed that the mark has “achieved a significant acquired distinctiveness with respect to the goods”.  In support of this claim, the applicant attached articles and advertisements that feature the mark.  In considering a claim of acquired distinctiveness, the issue is whether acquired distinctiveness of the mark in relation to the goods or services has in fact been established in the minds of the purchasing public, not whether the mark is capable of becoming distinctive. In re Redken Laboratories, Inc., 170 USPQ 526 (TTAB 1971); In re Fleet-Wing Corp., 122 USPQ 335 (TTAB 1959). 

 

The applicant’s supporting evidence consists primarily of articles from the applicant’s launch parties or sponsorship events, media placements and announcements and brand profiles from the applicant’s own website.  This evidence is insufficient to establish acquired distinctiveness.  Most of the evidence consists of articles reviewing the applicant’s “new” product, or articles referencing the applicant’s product being promoted at a party, e.g. Intrigue at “Terrell Owens Birthday Party”.  Evidence of use at these parties, although certainly constituting proof of promotion, does not sufficiently establish that the applicant’s proposed mark has acquired distinctiveness in relation to the goods in the minds of the purchasing public.  Absent any other evidence of actual long use of the mark, large scale expenditures in promoting and advertising, affidavits or declarations supporting recognition as source indicator or other convincing evidence of acquired distinctiveness, the applicant’s current evidence does not satisfy the burden of proving acquired distinctiveness.

 

Supplemental Register

 

The applicant may overcome the aforementioned refusal 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.

 

Although Supplemental Register registration does not afford all the benefits of registration on the Principal Register, it does provide the following advantages:

 

The registrant may use the registration symbol ®;

The registration is protected against registration of a confusingly similar mark under §2(d) of the Trademark Act, 15 U.S.C. §1052(d);

The registrant may bring suit for infringement in federal court; and

The registration may serve as the basis for a filing in a foreign country under the Paris Convention and other international agreements.

 

The applicant may simply request that the application be amended to the Supplemental Register.

 

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.

 

Configuration Mark - New Drawing Required

 

Since the design of the bottle is non-distinctive, the applicant must submit a new drawing of the mark presenting a single three-dimensional view of the goods or packaging showing in solid lines those features which applicant claims as its mark and the remainder of the drawing in broken or dotted lines.  Thus, the outline of the applicant’s bottle should be presented in dotted lines.  The remaining green portion of the mark depicting the applicant’s liqueur is the portion of the mark that is claimed as the mark.  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.  In addition to these drawing requirements, 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).

 

Description of the Mark

 

The applicant must submit a concise description of the design or stylized elements mark.  37 C.F.R. §2.37; TMEP §§808 et seq.  For example, the statement may be in the following form:

 

The mark consists of the color green within a bottle.  The bottle design is not claimed as a feature of the mark.  The green portion inside the bottle represents the Applicants’ liqueur and the color green is claimed as a feature of the mark.  The matter on the drawing shown in broken lines serves to show positioning of the mark and is not part of the mark.

 

Request for Information and Clarification

 

The applicant must clarify whether the color green in the mark serves any purpose or whether the color green is the result of how the liqueur is made and/or the ingredients used.  37 C.F.R. §2.61(b); TMEP §814.

 

The applicant is encouraged to telephone the assigned Examining Attorney with any questions regarding the application.

 

 

/Kevin M. Dinallo/

Trademark Examining Attorney

Law Office 107

571-272-9731

 

 

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.