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  76/638983

 

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.

 

Ornamental Refusal

 

Registration is refused on the Principal Register because the proposed mark, as used on the specimen of record, is a decorative or ornamental feature of the goods and would not be perceived as a mark by the purchasing public.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051, 1052 and 1127; See In re Owens‑Corning Fiberglass Corp., 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985); In re David Crystal, Inc., 296 F.2d 771, 132 USPQ 1 (C.C.P.A. 1961); In re Villeroy & Boch S.A.R.L., 5 USPQ2d 1451 (TTAB 1987); TMEP §§1202.03 et seq.

 

The specimens consist of a t-shirt and a hat, and the proposed mark is ornamental as used on the specimens because on the t-shirt, the mark appears in large lettering across a large portion of the front-center of the t-shirt and fails to appear in a manner that would indicate source.  Similarly, the proposed mark is ornamental as used on the hat because the mark appears in large lettering across a the front part of the hat and fails to appear in a manner that would indicate source.  Consumers are likely to buy the t-shirt and/or hat because it has the decorative term RVL boldly displayed across the front of the t-shirt and hats.   As to the size of the proposed mark appearing on the specimens, the larger the display relative to the size of the goods, the more likely that consumers will not view the ornamental matter as a mark.  See, e.g., In re Dimitri’s Inc., 9 USPQ2d 1666, 1667 (TTAB 1988) (SUMO merely ornamental in part because the wording “appears in large lettering across the top-center portion of the T-shirts and caps”); International Order of Job’s Daughters v. Lindberg and Co., 633 F.2d 912, 208 USPQ 718 (9^th Cir. 1980), cert denied 452 U.S. 941 (1982) (prominent display on jewelry was evidence that the proposed mark was being used in a non-trademark fashion).

 

Applicant may overcome the stated ornamental refusal by doing one of the following, as appropriate:

 

(1)   claiming acquired distinctiveness by submitting evidence that the proposed mark has acquired distinctiveness of the applicant’s goods in commerce under Trademark Act Section 2(f), 15 U.S.C. §1052(f).  Evidence may consist of examples of advertising and promotional materials that specifically promote the subject matter for which registration is sought as a mark, dollar figures for advertising devoted to such promotion, dealer and consumer statements of recognition of the subject matter as a mark and any other evidence that establishes recognition of the matter as a mark for the goods.  See TMEP §1202.03(d);

 

(2)   claiming acquired distinctiveness through ownership of a prior U.S. registration(s) for the same mark and the same or related goods and/or services by submitting the following in an affidavit or signed declaration under 37 C.F.R. §2.20:  “The mark has become distinctive of the goods and/or services as evidenced by ownership of U.S. Registration No.___ on the Principal Register for the same mark for related goods or services.”  37 C.F.R. §2.41(b); TMEP §§1212.04 et seq.;

 

(3)   submitting evidence that the proposed mark is an indicator of secondary source or sponsorship for the identified goods.  University Book Store v. University of Wisconsin Board of Regents, 33 USPQ2d 1385, 1405 (TTAB 1994); In re Olin Corp., 181 USPQ 182 (TTAB 1982).  That is, applicant may submit evidence showing that the proposed mark would be recognized as a trademark or service mark through applicant’s use of the proposed mark with goods or services other than those identified here.  In re Original Red Plate Co., 223 USPQ 836, 837 (TTAB 1984).  Applicant must establish that, as a result of this use on other goods or services, the public would recognize applicant as the secondary source of, or sponsor for, the identified goods.  See TMEP §1202.03(c);

 

(4)   submitting a substitute specimen that shows proper non-ornamental trademark use, along with a statement that ”the substitute specimen was in use in commerce at least as early as the application filing date”, verified with an affidavit or a signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.59; or

 

(5)   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.

 

 

Option number 4 is recommended.

 

Substituting a Basis

 

If applicant cannot comply with the requirement for an acceptable specimen for the Section 1 (a) basis asserted or has not used the mark in commerce prior to the filing date of the application, then applicant may substitute a different basis for filing if applicant can meet the requirements for the new basis. See TMEP §§806.03 et seq.

In this case, applicant may wish to amend the application to assert a Section 1(b) basis.

Applicant must submit the following statement in order to satisfy the application requirements for asserting a basis under Section 1(b) of the Trademark Act:

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 44, 15 U.S.C. §1126.  This statement must be verified with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20.  Trademark Act Section 44, 15 U.S.C. §1126; 37 C.F.R. §§2.34(a)(3)(i) and 2.34(a)(4)(ii); TMEP §1008.

 

Identification of Goods

 

The identification of goods is unacceptable as indefinite because it fails to specify the type of clothing.  The applicant must amend the identification to specify the common commercial name of the goods.  If there is no common commercial name, the applicant must describe the product and its intended uses.  TMEP §1402.01.  Applicant may adopt the following identification of goods, if accurate: 

 

Class 25:  clothing, namely, ____ [specify type, e.g., pants, sweater, hats, t-shirts, etc.].

 

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.

 

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 or services that are not within the scope of goods set forth in the present identification.

 

New Declaration Required

 

Applicant must submit a new declaration stating that applicant believes it is the owner of the mark, dated and signed by a person authorized to sign under 37 C.F.R. §2.33(a).  The previously submitted declaration is defective because it states that applicant is entitled to use the mark in commerce, but not that the applicant is the owner of the mark.  15 U.S.C. §1051(a)(3), 37 C.F.R. §2.33(b)(1); TMEP §804.02.

 

The following is a properly worded declaration for a §1(a) application:

 

The undersigned, being hereby warned that willful false statements and the like so made 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 resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; and that 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)

 

Stippling in the Mark

The mark contains stippling.  If the stippling is a feature of the mark, the applicant must submit a statement that the stippling shown in the drawing is a feature of the mark.  37 C.F.R. §2.37; TMEP §808.01(d).  However, if the stippling is meant to indicate shading, the applicant must submit a statement that the stippling in the drawing is for shading purposes only.  37 C.F.R. §2.37; TMEP §808.01(d).

 

PLEASE NOTE:  Applicant is encouraged to telephone the trademark examining attorney to resolve most of the issues raised above.  If the examining attorney is unavailable, the applicant is encouraged to leave a detailed voicemail message including its name, phone number, serial number and instructions regarding each issue raised in this action.

 

Response Guidelines

 

Please note that there is no required format or form for responding to this Office action.  However, applicant should include the following information on all correspondence with the Office:  (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 in writing 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., explain why it 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.

 

                       

 

 

/Laurie Mayes/

Trademark Attorney

Law Office 101

PH (571) 272-5874

Fax (571) 273-9101

 

 

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.