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  76/630694

 

The assigned trademark examining attorney has reviewed the statement of use and has determined the following:

 

Nondistinctive Trade Dress for Services-Refusal

 

Registration is refused because the proposed mark consists of nondistinctive trade dress that would not be perceived as a service mark.  Trademark Act Sections 1, 2, 3 and 45, 15 U.S.C. §§1051-1053 and 1127; Two Pesos, Inc. v. Taco Cabana, 505 U.S. 763, 23 USPQ2d 1081 (1992); In re File, 48 USPQ2d 1363 (TTAB 1998); In re Hudson News Co., 39 USPQ2d 1915 (TTAB 1996); TMEP §1202.02(b)(ii).

 

Trade dress used in connection with services generally refers to the visual appearance or image of the place in which a service is provided, such as a store or restaurant interior décor or external façade.  See, e.g., Fuddruckers, Inc., v. Doc’s B.R. Others Inc., 826 F.2d 837, 841, 4 USPQ2d 1026, 1029 (9th Cir. 1987) (“a restaurant’s décor … may acquire the source-distinguishing aspects of protectable trade dress . . .”). 

 

In the present case, the proposed mark is not inherently distinctive because it refers to the visual appearance of the place in which the services is provided.  Here, the applicant seeks to register the proposed mark, the three-dimensional tent design having alternating black and yellow stripes.  As evidenced by the specimen of record, the applicant provides its retail firework stands services in tents having alternating black and yellow stripes.  As such, the proposed mark consists of nondistinctive trade dress that would not be perceived as a services mark. 

 

In response to this refusal, applicant may submit evidence showing that the applied-for mark has acquired distinctiveness under 15 U.S.C. §1052(f) by submitting examples of advertising and promotional materials that specifically promote the mark as a service mark in the United States, dollar figures for advertising devoted to such promotion, dealer and consumer statements of recognition of the mark as a service mark and any other evidence that establishes recognition of the matter as a mark for the services.  The evidence must relate to the promotion and recognition of the specific features in the applied-for mark. Wal-Mart, 529 U.S. at 211, 54 USPQ2d at 1068; see generally TMEP §§1212.06 et seq. (discussing evidence of acquired distinctiveness).

 

In determining whether the applied-for mark has acquired distinctiveness, the following factors are generally considered: (1) length and exclusivity of use by applicant of the mark in the United States; (2) the type, expense and amount of advertising of the mark in the United States; and (3) applicant’s efforts, such as unsolicited media coverage and consumer studies, in the United States to associate the mark with the source of the services identified in the application.  In re Steelbuilding.com, 415 F.3d 1293, 1300, 75 U.S.P.Q.2d 1420, 1424 (Fed. Cir. 2005).  A showing of acquired distinctiveness need not consider each of these factors, and no single factor is determinative.  Id.; see 37 C.F.R. §2.41; TMEP §§1212 et seq. 

 

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

 

As an alternative to submitting evidence of acquired distinctiveness, applicant may amend the application to the Supplemental Register.

 

If applicant chooses to respond to the refusal(s) to register, then applicant must also respond to the following requirement(s).

 

Mark Differs in Drawing and Specimen

 

The mark depicted on the drawing disagrees with the mark on the specimen.  The mark on the drawing page must be a substantially exact representation of the mark that appears on the specimen.  37 C.F.R. §2.51. 

 

In this case, the drawing displays the mark as a three dimensional tent design having eight black and seven yellow stripes, while the specimen shows the mark as a three dimensional tent design having four wide black stripes and four yellow stripes.

 

Therefore, applicant must submit one of the following:

 

(1)  A new drawing of the mark that agrees with the mark on the specimen but does not materially alter the original mark .  37 C.F.R. §2.72(b); TMEP §§807.13, 807.13(a) and 807.14 et seq.; or

 

(2)  A substitute specimen showing the mark as it appears on the drawing, and the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “The substitute specimen was in use in commerce prior to the expiration of the time allowed applicant for filing a statement of use.”  37 C.F.R. §2.59(b)(2); TMEP §904.09.  If submitting a specimen requires an amendment to the dates of use, applicant must also verify the amended dates.  37 C.F.R. §2.71(c).

 

Applicant may not withdraw the statement of use.  37 C.F.R. §2.88(g); TMEP §1109.17.

 

Response to Office Action

 

Please note, there is no required format or form for responding to this Office action.  The Office recommends applicants use the Trademark Electronic Application System (TEAS) to respond to Office actions online at http://www.gov.uspto.report/teas/index.html.  However, if applicant responds on paper via regular mail, the response should include the following information:  (1) the name and law office number of the examining attorney; (2) the serial number of this application; (3) the mailing date of this Office action; and, (4) applicant's telephone number.

 

When responding to this Office action, applicant must make sure to respond to each refusal and requirement raised.  If there is a refusal to register the proposed mark, then applicant may wish to argue against the refusal, i.e., submit arguments and/or evidence as to why the refusal should be withdrawn and why the mark should register.  If there are other requirements, then applicant should simply set forth in writing the required changes or statements and request that the Office enter them into the application record.  Applicant must also sign and date its response.

 

If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.

 

 

 

/Jenny Park/

Examing Attorney

Law Office 104

571-272-8857

 

 

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.